Posts Tagged: patent prosecution

Section 103 Rejections: How Common Are They and How Should You Respond?

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section …

How NOT to Respond to an Office Action

On September 19, 2016, a pro-se inventor filed an Office Action Response that will go down in the annals of Patent Office history right up there with the Are …
By Gene Quinn
21 days ago 34

USPTO considering an end to accelerated examination

The Patent Office recently announced changes to the accelerated examination program, and hinted that they would soon publish another notice soliciting public comments with respect to whether …
By Gene Quinn & Steve Brachmann
2 months ago 6

Hop on the Patent Prosecution Highway (PPH) via Australia

IP Australia actually has built into its quota system a driver for completing prosecution of open cases before taking up new cases. Therefore, there is a rule …
By Paula Chavez
2 months ago 3

Steps the PTO must take to address low quality patent examination

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look …
By Gene Quinn
3 months ago 14

Breaking through the culture of Examiner v. Applicant at the USPTO

Somehow a culture of Examiner v. Applicant has evolved. There doesn't seem to be much in examiner training to pit them against external stakeholders. No evidence there …
By Raina Haque
3 months ago 26

The Anatomy of a Bogus Alice Rejection

First, this type of circular "logic" is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial …
By Gene Quinn
3 months ago 15

Alice Experts and the Return of Second Pair of Eyes to the PTO

In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even …
By Gene Quinn
3 months ago 64

Message from the USPTO: It’s Patent Prosecution, not Persecution

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions. Instead, the USPTO has already …
By Raina Haque
3 months ago 80

Prosecution reopened: Examiners stop applicants from appealing

Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time …
By Gene Quinn
3 months ago 26

Getting a patent is not the end goal for a startup, it’s just the beginning

RUSS KRAJEC: Getting a patent is not the end goal. Using an issued patent is not the end goal. It’s the beginning for the startup. Think …
By Gene Quinn
3 months ago 1

Patent Office announces Post-Prosecution Pilot Program

The Patent Office hopes that by giving the applicant the opportunity to provide an oral presentation to the panel during a conference with the examiners, as well …
By Gene Quinn
3 months ago 1

Improving efficiency of the examination process for patents worldwide

The IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of …
By Steven Gong
6 months ago 2

A Better Way to File Patent Applications

The PathWays system is designed to help applicants predict which art units an application is likely to be filed before the application is even filed. A unique …
By Megan McLoughlin
6 months ago 8

Understanding the Patent Process: Rejections vs. Objections

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner …
By Gene Quinn
7 months ago 1