Patent Law

Examples Of How To Respond To Takings Of Official Notice - Part II

Posted on December 23, 2008
© 2008, Michael E. Kondoudis This is the second in a two-part series on Official Notice and strategies for responding to rejections based on Official Notice.  In part one of this series, I discussed basic principles of Official Notice.  What follow are a few examples of responses to rejections based on the principles discussed in my [...

Official Notice and Tips for Responding to Rejections Based on Official Notice

Posted on November 19, 2008
© 2008, Michael E. Kondoudis Official Notice is a principle in U.S. patent prosecution that authorizes an Examiner to depart from the general requirement to present evidence on the record to support a claim rejection.  By ?taking official notice?, an Examiner may rely on facts beyond the record to reject claims...

A Welcome To My New Readers/RSS Subscribers

Posted on October 15, 2008
This blog has received a sizable uptick in readership over the last couple of months.  In fact, Patentably Defined now enjoys around 3,000 unique visitors every month and a far greater number of  subscribers to the RSS feed.  So, I wanted to make sure that my new readers were taking full advantage of the content [...

A First Report on the USPTO?s Continuing Legal Education System (CEP)

Posted on September 25, 2008
© 2008, Michael E. Kondoudis I recently completed participation in the USPTO’s new pilot continuing legal education system called “Continuing Education for Practitioners” (CEP).  As I explained in my earlier post on the CEP system, the USPTO solicited volunteers to try out their new CLE system...

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Notice About September Deposit Account Maintenance

Posted on September 24, 2008
For those of you who may need to replenish you deposit accounts at the end of the month, the USPTO will be closing the September month-end accounting date early.  Replenishments received after 10:00 a.m. (ET) on September 30 will be credited to your account in October...

Some Strategies For Responding to Rejections Based on Inherency

Posted on September 17, 2008
© 2008, Michael E. Kondoudis Inherency Defined Inherency is a doctrine in U.S. patent prosecution by which unstated or unillustrated aspects of cited art are treated as if they are expressly disclosed.  The basis for this doctrine is that some things that will, as a matter of scientific fact, always flow from what is disclosed in art...

Goodbye to Duplicate Paper Copies of Fee Forms

Posted on September 02, 2008
© 2008, Michael E. Kondoudis For those who are still filing by paper, the USPTO announced last week that it will finally be doing away with the requirement for duplicate copies of forms required for processing fees (e.g., an authorization to charge a deposit account)...

USPTO Seeks Volunteers to Test Its Online Continuing Education System

Posted on August 25, 2008
© 2008, Michael E. Kondoudis The USPTO has developed a system to administer continuing legal education to practitioners.  This system, entitled the “Continuing Education for Practitioners” or (“CEP”) system, is intended to “increase efficiency, reduce pendency, and improve quality in the patent process...

Enhanced Version of EFS-WEB Coming Soon

Posted on August 12, 2008
© 2008, Michael E. Kondoudis The USPTO is planning to release an enhanced version of its web-based patent application and document submission system on August 17, 2008.  The enhanced version, EFS-Web 1.4, will include some new features, several of which are based on EFS-Web user requests...

A Few Reasons to Consider Including a Listing of Claims in Every Response to an Office Action

Posted on August 07, 2008
© 2008, Michael E. Kondoudis Listings of claims are required in most, but not all responses to Office actions.  This post discusses when they are required and why it may be prudent to include them even when they are not. The Rules The manner of making amendments in a patent application is governed by 37 CFR...

Interesting Editorial on the Subject of Patent Reform in this Presidential Election

Posted on August 05, 2008
Yesterday the patent blog Patently-O had an interesting guest editorial on the subject of the presidential candidates? respective positions (or absence thereof) on U.S. patent reform.  The gist of this editorial is that Sen. Obama has and will continue to take patent issues “seriously” while Sen...

Some Comments on RCEs, Submissions, and RCE Strategy

Posted on July 23, 2008
© 2008, Michael E. Kondoudis RCE Basics A Request for Continued Examination (RCE) is a request to continue prosecution of an application.  Essentially, RCE practice can be thought of as a mechanism to buy another full examination of an application without having to refile it...

An Applicant Knows More About Their Invention Than An Examiner ? USPTO Director Jon Dudas

Posted on July 16, 2008
© 2008, Michael E. Kondoudis The USPTO website has a new story about the inclusion of USPTO Director Jon Dudas in Managing Intellectual Property Magazine?s 2008 ?Top 50 Most Influential People in IP.?  Apart from the merits of the story (forgive me, but I think it is self-evident that such a list would necessarily include the [...

A Discussion of Strategies to Address Successive Non-Final Office Actions That Are Not Advancing Prosecution

Posted on June 30, 2008
© 2008, Michael E. Kondoudis In an earlier post, I discussed the Office?s policy of compact prosecution and how that policy affects patent prosecution in the USPTO. Under that policy, second Office actions are usually made final, except in limited circumstances...

Appealing Non-Final Rejections in Continuing Applications

Posted on June 24, 2008
© 2008, Michael E. Kondoudis A common prosecution strategy when an Office action indicates allowed claims or allowable subject matter is to cancel the rejected subject matter and continue prosecuting that canceled subject matter in a continuing application...

How to Identify Support for a Claim Amendment and When to Do So

Posted on June 03, 2008
© 2008, Michael E. Kondoudis This post discusses strategic considerations concerning identifications of support for claim amendments. New Matter is Prohibited Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing)...

How to Respond to § 103 Obviousness Rejections Using the ?All Elements Test? in View of Recent Revisions to Section 2143.03 of the Manual of Patent Examining Procedure - Part II

Posted on May 27, 2008
© 2008, Michael E. Kondoudis In an earlier post, I discussed reasons why it is preferable to rely on the MPEP for authority during prosecution. An exception to this guideline is when the MPEP is either incorrect or incomplete, which I suggest is the case with newly revised Section 2143...

New Site of Interest - Relatip.com

Posted on May 16, 2008
One of the benefits of publishing a blog is the prerogative to promote the perspectives, people, and sites that I find to be of interest and that I believe my readers may find interesting. In this regard, I want to mention a new, novel IP website named Relatip...

USPTO Electronic Business Center Difficulties - PAIR is Down

Posted on May 14, 2008
The USPTO’s Electronic Business Center (EBC) is currently experiencing technical difficulties. The Patent EBC has been down for a few hours as of the time of this post and the length of the outage is unknown. The following portals appear affected: Patent Application Information Retrieval (Public PAIR) Patent Electronic Filing (EFS-Web) Patent Application Information Retrieval [...

How to Respond to § 103 Obviousness Rejections Using the ?All Elements Test? in View of Recent Revisions to Section 2143.03 of the Manual of Patent Examining Procedure

Posted on May 05, 2008
A while back, in response to my post on citing to the Manual of Patent Examining Procedure, reader Michael Hull of Miller, Matthias & Hull asked an astute question (thank you!) about whether section 2143 of the Manual of Patent Examining Procedure (MPEP) would be rewritten in response to KSR...

Patentably Defined Turns A Year Old!

Posted on April 07, 2008
Patentably Defined is a year old. I want to take this opportunity to thank all of you for visiting this blog, for suggesting it to colleagues, and for leaving your comments. Last month was this blog?s busiest month to date. I am still in awe over the thousands of monthly visitors to [...

Recent Decisions of the Board of Patent Appeals and Interferences Confirm the Need for an Adequate Rational to Modify/Combine

Posted on March 31, 2008
© 2008, Michael E. Kondoudis A colleague passed along the results of a brief survey of some recent Board of Patent Appeals and Interferences (BPAI) decisions in which the BPAI cited KSR and reversed claim rejections. Two aspects of the survey results stood out...

New Website of Interest ? ?USPTOExaminers?

Posted on March 27, 2008
There is a new website that may be of interest to the patent and trademark prosecutors who read this blog. It is called ?USPTOExaminers? and looks to be a forum to discuss individual Examiners at the U.S. Patent and Trademark Office. The developers of the website describe it as ?a website that was developed [...

Strategic Use Of A Deficient Office Action (or Why a Call to an Examiner Might Not Be In an Applicant?s Best Interests)

Posted on March 16, 2008
I have received numerous comments, both public and private, about my earlier post on avoiding improper final rejections. In that post, I outlined a practice of advising the Office when a next Office action cannot properly be made final because of a deficiency in a current Office action...

Examples of How to Respond to Written Description Rejections - The Fundamentals of the Written Description Requirement and Strategies for Responding to Written Description Rejections ? Part II

Posted on February 27, 2008
This post is the second in a series addressing written description rejections. The following are basic examples of responses to written description rejections that apply some of the principles I discussed in my earlier post on the fundamentals of the written description requirement...

Improper Final Rejections and Suggestions for Avoiding Them (and Hopefully the Expense Of Having to Request Their Withdrawal)

Posted on February 11, 2008
Patent examination in the U.S. Patent Office is guided by the principles of compact prosecution, which I discussed in some detail in an earlier post here. Under the principles of compact prosecution, second Office actions are typically final. The finality of second Office actions is addressed in section 706...

New Oath Requirements And Advising Clients Aboout The Duty Of Candor - Redux

Posted on January 23, 2008
The U.S. Patent Office is modifying its approach to oaths/declarations. Starting on June 1, 2008, oaths/declarations must acknowledge “a duty to disclose information material to patentability as defined in Rule 1.56.” This serves as yet another example of the importance of understanding Rule 56, advising applicants/clients of their duty, and how to satisfy this duty...

The Fundamentals of the Written Description Requirement and Strategies for Responding to Written Description Rejections ? Part I

Posted on January 18, 2008
This post is the first of a two-part series on the written description requirement. This first installment discusses the fundamentals of the requirement, relevant law, and the proper standards for compliance. The second installment will provide examples of how to more effectively respond to rejections based on the written description requirement...

New Browser Toolbar - The ?Patent Pal?

Posted on January 13, 2008
© 2007, Michael E. Kondoudis A colleague recently brought to my attention a neat little patent oriented browser tool bar named “Patent Pal.” The “Patent Pal” toolbar works with Internet Explorer and Firefox and includes: over 20 patent related search bookmarks, including Google Patents, FreePatentsOnline, Esp@cenet, WIPO, Pat2Pdf, the MPEP, among others; bookmarks to useful [...

The Best of 2007 Roundup

Posted on January 01, 2008
I hope that you had a happy, fun, and safe New Year. Thank you for a great 2007!  Until we visit again, here is a roundup of some of the best of 2007. 1. Prosecution After KSR ?The teaching-suggestion-motivation test is useful but ultimately too rigid...

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