Posts Tagged: "prosecution"

An Overview of the U.S. Patent Process

The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (FOAM). At this point you are now truly beginning what most would refer to as prosecution of the patent application. The examiner has told you what, if anything, he or she thinks is patentable, and explained (usually in abbreviated fashion) what claims are lacking and why. The applicant, or attorney, must respond to each and everything raised by the examiner in a response filed no later than 6 months after the date of the First Office Action. Notwithstanding the 6 month period to respond, the Patent Examiner will set what is called a “shortened statutory period” to respond, which for an Office Action is 3 months. The shortened statutory period is the time period within which you can respond without having to pay a fee to respond. After the shortened statutory period, which can be 1, 2 or 3 months depending on what the Examiner sends, you can respond up to 6 months but only if you request AND pay for an automatic extension. Automatic extensions can get expensive, the cost goes up depending on how many months of extension you have to purchase. They are called automatic extensions because the Patent Office must grant the extension if you ask and pay for the extension. You should, however, plan on doing things within the shorten statutory period in order to conserve funds and in order to get the maximum patent term.

Gene Quinn

March 15, 2014

A Myriad of Tips on Biotech Patent Prosecution

On the method claims, the test, derived from Prometheus, is whether the claims add enough to a natural principle/law of nature/ natural phenomenon to make them go beyond claiming just the natural principle/law of natural/natural phenomenon alone and to ensure practical application. If they do and if that extra stuff isn’t just routine or conventional steps known in the field, the claims are patent eligible. So, are diagnostic method claims acceptable, or what about personalized medicine claims outlining which drugs work better for specific patient populations? How about a kit with instructions? We can look to the PTO Guidelines and to the case history after Prometheus to give us a some tips on what may not be eligible and how put our best foot forward when preparing biotech process patent applications.

Dolly Krishnaswamy

November 25, 2013

Do Restriction Requirements Vary by Technology Center?

For patent prosecutors and their clients, restriction requirements represent a significant cost increase as splitting one patent application into several new applications results in the multiplication of fees and, often, loss of protection due to expense limitations. The issuance of restriction requirements by patent examiners at the USPTO seems to be somewhat random and inconsistent.

Christopher Holt

July 7, 2013

Patent Attorney Asks Examiner “Are you drunk?”

Are you drunk? No, seriously… are you drinking scotch and whiskey with a side of crack cocaine while you “examine” patent applications? (Heavy emphasis on the quotes.) Do you just mail merge rejection letters from your home? Is that what taxpayers are getting in exchange for your services? Have you even read the patent application? I’m curious. Because you either haven’t read the patent application or are… (I don’t want to say the “R” word) “Special.”

Gene Quinn

May 1, 2013

Reality Check: Compensation for Patent Practitioners

In Patent Strategy I explained that a reasonable quote for an office action response is $2,000. Certainly it can be more depending upon the technology, but if you were going to poll patent practitioners from patent attorneys to patent agents I suspect you would come out with something close to a $2,000 average. This prompted one patent examiner to comment: “You said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”

Gene Quinn

January 7, 2012