Antecedent basis refers to the requirement that all words in a claim must be explained in the specification so that the words can be clearly understood. Otherwise, the claim will be rejected or invalidated for being indefinite. For example, if you use the word "valve" in the claim, the detailed description must explain whether that is a liquid valve or a heart valve if it … [Read more...]
Patent prosecution is the act of communicating with the Patent Office such as by filing an application for patent, responding to office actions, satisfying various patent law requirements for securing a patent. Browse related articles below. Browse related articles below.
What is a notice of allowance and next steps?
A notice of allowance is an office action from the Patent Office which informs the patent applicant that the claims in the patent application can be patented. To obtain the patent, an issue fee needs to be paid. About 4 to 6 weeks after payment of the issue fee, the Patent Office will grant the patent. What should you do after you receive a notice of allowance? Within three … [Read more...]
How to respond to a final office action?
A final office action indicates that a patent application has been rejected twice. The examiner does not need to consider further amendments and arguments. However, there are ways to continue the examination. This article will also cover a basic strategy for responding to a final office action. What is an office action? An office action on the merits is a written … [Read more...]
What is an Office Action?
An office action is a written explanation of an examiner's review of your patent application. In the office action, the examiner will object to the formalities of the application and reject or allow the patent application. This article explains several types of Office Actions and how to respond to them: Filing receipt Notice to file missing parts Restriction … [Read more...]
Enablement easier to satisfy for broader patent claims
With patents, everything starts and ends with the claims which means that the specification, the arguments presented during prosecution and all of the patent applicant’s efforts affect the language of the claims. For example, a patent specification must enable one of ordinary skill in the art to make and use the invention as recited in the claims. Alcon Research Ltd. v. … [Read more...]
Does a restriction requirement disclaim non-elected species?
Below, Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., LTD (Fed. Cir. August 1, 2018) is discussed in terms of whether the scope of design patent protection is affected when electing a species in response to a restriction requirement. However, the context of the parties and how the litigation arose provides insights on how U.S. companies might better protect … [Read more...]
Obviousness is based on path PHOSITA would have taken
A factor in analyzing obviousness Obviousness is based, in part, on the path a person having ordinary skill in the art (PHOSITA) would have taken based on the prior art, and not the path the inventor actually took. In the following case, the patent owner took a commonly known path to produce a stable version of a known drug compound but in taking that path created a new … [Read more...]
Teach away argument for patentability requires more than a preference away
Meiresonne v. Google (Fed. Cir. March 7, 2017) stands for the proposition that a proper teach away argument to defeat of obviousness rejection requires a discussion in the prior art of more than just a preference away, disparagement or being critical of the combination suggested by the examiner to make the claimed invention. A proper teach away argument requires that the prior … [Read more...]