Patent Basics

What are Examiner Interviews? How should I prepare and conduct one?

Examiner interviews are good ways that an application (a patent attorney and/or inventor) can discuss an office action and the related art with the issuing Examiner. Typically, Examiners will issue office actions with 35 USC 102 or 35 USC 103 with art they use to meet each and every element of your claims. In my [...]

By Gene Pierson|2013-07-01T21:06:50-05:00July 1st, 2013|Patent Basics|Comments Off

How to respond to a 35 USC 103 rejection?

Linked is a sample response to Office Actions from the USPTO PatentAttorneyTemplateResponsetoOfficeActions Examiners commonly reject claims as being obvious as 35 USC 103 in view of a combination of prior art. 35 USC 103(a) states: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in [...]

By Gene Pierson|2013-08-08T16:38:41-05:00June 28th, 2013|Patent Basics|Comments Off

What is a patent restriction requirement under 37 CFR 1.142?

Restriction requirements occur when a patent examiner at the USPTO deems that an inventor has included more than one invention in a patent application. With the recent increase in filing fees, there may be a strong desire to include patent claims directed to a plurality of related, but separate inventions into one patent application. However, [...]

By Gene Pierson|2013-08-08T15:54:36-05:00June 10th, 2013|Patent Basics|Comments Off

What is a terminal disclaimer in patent law? Double Patenting?

Double patenting seeks to prevent an unjustified extension of time beyond the term of a patent. Therefore, if an applicant files patent application 1 on date A and files a similar patent application 2 on date B, the second invention may be considered a double patent, and the right to exclude others of the patented [...]

By Gene Pierson|2013-06-08T18:03:05-05:00June 8th, 2013|Patent Basics|Comments Off

How to respond to a 35 USC 102 rejection including sample wording

Linked is a sample response to Office Actions from the USPTO PatentAttorneyTemplateResponsetoOfficeActions Overview of 35 USC 102: Essentially a 35 USC 102 rejection states that a single piece of prior art discloses each and every claimed limitation, and the piece of prior art was available before applicant’s invention was filed. The MPEP (the patent rule [...]

By Gene Pierson|2013-08-08T16:40:19-05:00June 8th, 2013|Patent Basics|Comments Off

Sample of how to respond to a 35 USC 112, second paragraph rejection

Below are two samples of how I typically respond to 112, second paragraph rejections. 1) On page 2 of the Office Action dated April 19, 2013, claims 1 and 2 are rejected under 35 U.S.C § 112, second paragraph. To expedite prosecution and without conceding to the Examiner’s rejections, Applicant has amended claims 1 and [...]

By Gene Pierson|2013-04-19T19:03:04-05:00April 19th, 2013|Patent Basics|Comments Off

How can I tell if a patent is expired?

A common question (or variation)I get asked is “I have an idea that is based on that is based on a product that was patented at one point, how can I tell if the product is still patented so I don’t infringe?” Start-ups ask this question to 1) try to limit their liability even if [...]

By Gene Pierson|2013-04-22T23:12:25-05:00February 27th, 2013|Patent Basics|Comments Off

Patent Enablement: What level of detail do I need for a patent?

A question I get asked often is, “I have an idea, I think it is new, but I do not totally understand the technology I am working with or how to code my invention, what level of description do I need to know when writing a patent?” First, the law on this subject is governed [...]

By Gene Pierson|2013-02-25T20:59:41-06:00February 25th, 2013|Patent Basics|Comments Off

What is an information disclosure statement to the U.S. patent office?

An information disclosure statement (IDS) refers to a submission of known references that are considered material/relevant to an inventor’s patent application to the patent office. During the process of obtaining a patent, there is a duty for attorneys, inventors, assignees to disclose references such as other patents or articles that may be material or relevant [...]

By Gene Pierson|2013-01-07T11:03:32-06:00January 7th, 2013|Patent Basics|Comments Off

How to read and respond to an Office Action from the USPTO

Office Actions are formal documents prepared and communicated from a patent examiner at the United States Patent and Trademark Office. Office Actions are common in patent prosecution to obtain a patent, and typically during patent prosecution at least 2-3 Office Actions will be issued before a patent application is granted as a patent. These linked [...]

By Gene Pierson|2013-08-09T12:16:03-05:00January 4th, 2013|Patent Basics, Uncategorized|Comments Off