Posts Tagged: "foam"

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 when the substance of the patent claims being sought are deemed to be unallowable under 35 U.S.C. 101, 102, 103 and/or 112. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. An example of a matter of form as to which objection is made is dependency of a claim on a previously rejected claim. You can also get an objection where claims have not been properly grouped together in violation of 37 CFR 75(g).

Gene Quinn

April 2, 2016

More Applicants Should Use the First Action Interview Program

The First Action interview (FAI) program affords applicants a no-fee opportunity to speak with examiners early during prosecution, before the examiner has invested the time to prepare a complete Office Action. Yet, a free FAI request is filed in a mere 1 of 625 applications. Our analysis shows that the prosecution benefits of this program continue to be realized and that the program improves both the efficacy (allowance rate) and efficiency (office-action counts and time to issuance) of prosecution. We have seen, both in our professional experiences and through these statistics, such great benefit of this program that we have encouraged the USPTO to take this program one step further and establish a Pre-Search Interview Program that would allow the applicant to explain and potentially demonstrate an invention even prior to the examiner conducting a search.

Kate Gaudry & Thomas Franklin

March 30, 2016

USPTO Extends First Action Interview Pilot Program

On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program. The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program. Further inquiry will be made into whether the program should be extended further or made permanent. During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.

Gene Quinn

July 12, 2012

An Overview of the U.S. Patent Process

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

Gene Quinn

July 31, 2011

USPTO Backlog: Patent Pendency Out of Control

The average pendency of U.S. patent applications is out of control. Everyone involved in the industry knows this to be true, but it might be easy to forget just how bad it is at times. Like so many patent attorneys and agents, I did not practice during the Reagan years. While I have over 10 years of experience as a…

Gene Quinn

April 22, 2009