The process that starts with the filing of the patent document to getting the patent granted finally by the respective patent office constitutes patent prosecution. It is important that even before the patent is being filed, the conversion of the idea and the working details of the invention be discussed and the patentable invention is characterized. Post this, a patent document starts taking form when it is drafted carefully and after careful deliberation and as a combined effort of the inventor and the Patent attorney/drafter.
This drafted document along with the diagrams, forms, the Information disclosure statement and the fee and with other formalities in consonance with the USPTO procedures is filed. Once the filing formalities are completed, the next step is that the patent document gets published and the first office action is mailed. The First Office action is a document sent out by the examiner after the first substantive examination of the patent in view of the cited prior art and any other prior art which may be relevant according to the search conducted by the examiner.
However, before the issuance of the first Office Action, if there any objections with respect to certain formalities, the same is issued in the form of a notice. These may have objections regarding the illegibility of the drawings attached, regarding the fee, translations etc. We at OutsourceIP remedy the said objections by getting the drawings corrected using an Illustrator and getting the remedies corrected using the correct translations etc. In certain cases, extensive proofreading may be necessary to remedy the objections raised by the examiner, which is also a service we provide.
Post this, the first office action is issued. It possesses objections broadly under four categories namely;-
- 35 U.S. Code § 101 – eligible subject matter
- 35 U.S. Code § 102 – Novelty
- 35 U.S. Code § 103 – Obviousness
- 35 U.S. Code § 112- Clarity and conciseness of the specification
35 U.S. Code § 101 – Eligible subject matter
US patent law does not have a list of unpatentable subject matter as in certain jurisdiction but broadly mentions the patentable subject matter. Additionally, it should not fall wholly within the judicial exceptions established. The United States Court’s precedents state ‘laws of nature, physical phenomena, and abstract ideas as specific exceptions to § 101’s broad patent-eligibility principles:’
Objections under 101 are commonly seen in inventions related to the molecular biology, microbiology and immunology under the Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, and the Myriad decisions & software-related inventions, e-commerce and business methods, under Alice Corp. Pty., Ltd. v. CLS Bank Int’l. and Bilksi decisions respectively.
Mostly these objections can be remedied by proper argumentation, however it can also be handled by filing a request for Continued Examination (RCE), an interview or an appeal. However, considering the costs, a response with arguments or an RCE is the most sought-after form to remedy the situation. We at OutsourceIP, are well prepared to provide the necessary argumentation and responses required in the filing of the RCE.
35 U.S. Code § 102 and 103– Novelty and Obviousness
As far as Novelty and Obviousness are concerned, the objections raised by the patent office are on aspects of novelty with respect to a prior art document where all patentable features of the invention is encompassed in that single prior art document and as far as obviousness is concerned, if the examiner is able to combine two or three applications or documents to make the examined invention, then objections are raised on the same. Novelty and obviousness rejections are remedied by extensive technical analysis and arguments on the same.
Therefore, 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 upon 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.
35 U.S. Code § 112- Clarity and conciseness of the specification
The objections under 112 are most with regards to the claims not being in a specific format or that of the specification which may not be enabling the claims or the disclosure of the prior art in the specification. Such objections are not per se formality objections and are remedied by mostly amending the specification by inserting those required paragraphs or amending the claims to the required formats.
Post the mailing of the response to the examiner, if the examiner is satisfied with the response, he/she goes ahead to issue a notice of allowance. However, in the event the examiner is not satisfied with the arguments, the same would lead to the issuance of the another office action and the process repeats. At the time of responding to the final office action, in the event of the objections were not overcome, a necessity for an RCE may arise. Though additionally options of appeal etc. are available. That is the most common way to deal with the objections as against filing an appeal due to the costs involved. An interview with an examiner also in most cases helps resolve the objections one on one. The probability of getting the patent allowed is high when the interview is combined with the filing of the RCE.
Once, the examiner finds that the Applicant is entitled to receive patent under the laws of the United States, the examiner proceeds to issue the Notice of allowance. Once this notice is issued and the issued fees are paid the patent proceeds for grant and close the prosecution on merits.