The patent examination process undertaken by the respective patent offices is a crucial step in the entire process of getting the patent granted. The Patent offices are divided into different art units which specialize in a particular technology area according to which the patent applications are being assigned to the different examiners. The examiners have a set timeline within which they are to process the same. However, depending upon backlogs patent offices in certain jurisdictions, may not be able to send the office actions within the stipulated time. The term Office Action is more commonly used with the USPTO, it is otherwise referred to as the Examination report or an opinion etc.
Before a substantial examination is performed by an examiner, the patent application is examined for any deficiency non-substantively as regards to the application, drawing, fees etc. In case, there are any such discrepancies the same is notified to the applicant in order to rectify the same.
In response to the Office action or the Examination report whichever the case may be, it is important to keep in mind the jurisdiction in which the patent application is filed. As the practices of the respective patent office’s play an important role in the way the response is to be filed. The responses also require following the rules laid down in the respective manuals. The jurisdiction plays an important role as the legal standing of the manuals are also very pertinent.
As regards to the response to the novelty and obviousness/inventive step objections, it is important to consider prosecution history estoppel while responding to a US office action as against a European Examination report. The strategy has taken or the width of the claims which may finally be granted is heavily based upon the technical arguments combined with the legal arguments and the amendments to the claims which are made.
In some cases, the first office action or the Examination report may not remedy all the deficiencies, therefore, subsequent office actions or examination reports are issued and the to and fro happens between the Applicants and the Patent Office until the final office action is issued upon which there is an option of a continuing the Examination process with the USPTO, in addition to requesting for a hearing. However, with the European Patent Offices, the option is unavailable and in case, the Examiner is not satisfied upon the multiple correspondences, the only option is for a hearing.
The substantive Examination primarily brings about novelty and obviousness/inventive step objections in addition to subject matter which may not be allowed. As far as novelty and inventive step objections are concerned, the best way to provide the responses to detail the invention out with respect to the prior art stated by the examiner. The claim mapping requires being done in order to be able to bring these details out. Since most inventions are incremental inventions, the patentable invention is to be identified clearly and categorically differentiated with respect to the prior art. This differentiation forms the basis of the response which is to be filed. Inventor participation while drafting the response adds tremendous value when the differences can be pinpointed with precision. However, the patent attorney is having the understanding of the law and the knowledge of the practice facets of the patent prosecution process, sometimes, uses his or his discretion to use or not to use certain technical arguments that the inventor may illustrate.
As far as the ineligibility of subject matter objection is concerned, the same is received in high tech areas and in life sciences, where the invention falls closely to the prohibited subject matter or judicially created exceptions. Though the United States does not have a list of the subject matter which is not allowable in the governing law, it has judicially created exceptions, to fill in the gap. Objections with respect to the computer implemented inventions have become harder to overcome post the Alice decision. Prior to the decision, the European Patent Office was considered to have harsher examination standards in this technological area.
We at OutsourceIP, we provide an “option” analysis by weighing in the objection of the examiner along with the prior art to determine whether the independent claims need to be amended whether by way of arguments the objections may be overcome. Depending on the client’s need we go ahead and provide the response accordingly. We also chart out the features of the independent claim alongside the objections raised by the examiner and provide and in detail response to the same. This claim charting is an integral part of the response while overcoming the novelty and obviousness rejections. Additionally being up to date with the procedures, law and the practice facets of the different patent offices, allows us to provide the responses and strategies to be able to overcome the objection and get the patent granted.