Patent applications examiners

From our review of the statutory language of 103 as well as the application of that statute as spelled out in Graham v. John Deere, we have seen that obviousness is determined by an inquiry that initially takes into account the scope and content of the prior art, the differences between the claimed invention and the prior art, the level of skill of one of ordinary skill in the art, and any secondary evidence of nonobviousness. In a patent application examination at the USPTO, in order for an examiner to make an obviousness rejection of the invention, the examiner must present a prima facie case of obviousness. Prima facie is Latin for on the face of it, and it means that the patent examiner must put forth sufficient written argument or evidence in view of the appropriate legal precedence such that the claimed invention, as described in the specification and in view of the prior art,... 

Y. Kometani, (to Daikin Kogyo Co., Ltd.), Published Japanese patent application (examined). No. 8863 (1977)... 

In the PCT examination process, national patent applications may be filed at the end of Chapter I (18 months from the home appHcation filing date), or at the end of Chapter II (30 months from the home appHcation filing date). If the examination of the U.S. home appHcation ends successfully before completion of the examination of the counterpart appHcation in PCT Chapter I, the PCT AppHcant may file national appHcations including the claims examined and allowed by the U.S. PTO without proceeding to PCT Chapter II processing. A brief timeline of patent appHcation examination under the PCT is provided in Table I. 

A patent file history, also called a file wrapper, is the complete set of documents for a patent filed with the U.S. Patent and Trademark Office. These papers chronicle communications and actions taken by the patent examiner, the applicant, and the applicant s attorney from the time of patent application to issue. File histories are available from commercial services such as Intellectual Property Network (described below). 

A thornier issue than written description for ESTs and SNPs, however, is that of utility. Section 101 of the patent statute requires that the subject of a patent must be a "useful invention." Under the Guidelines, an application satisfies the utility requirement if the invention has "specific, substantial, and credible" utility such that "a person of ordinary skill in the art" would recognize the claim as credible "in view of disclosure [contained in the patent application] and any other evidence of record. .. that is probative of the applicant s assertions"(Utility Examination Guidelines, 2001). The Guide-... 

Guidelines for Examination of Patent Applications Under the 35 U.S.C. 112, Paragraph 1, "Written Description" Requirement (Written Description Guidelines), U.S. Patent and Trademark Office, 66 Fed. Reg. 1099-1111 (2001). 

The PCT does not grant patents. Application under the PCT goes through two phases an international phase and a national phase. The international phase is where the application is searched, published, and subjected to preliminary examination. Then the application enters into the national phase in each country. The application is subjected to examination and granting procedures in each country. 

After its submission to a patent office, the patent application is briefly reviewed and, if all the required information is provided, a formal filing date is issued. A detailed examination of the patent will then be undertaken by patent office experts, whose assessment will be based upon the four main criteria previously outlined. A report is subsequently issued accepting or rejecting the patent claim. The applicant is given the opportunity to reply, or modify the patent and resubmit it for further evaluation. In some cases, two or three such cycles may be undertaken before the patent is granted (or perhaps finally rejected). 

Also, during examination of a patent application the scope or breadth of the claims often needs to be narrowed because of prior disclosures. Any amendments to the claims must be based on the contents of the application and so, ideally, the patent application contains many layers of fall-back positions which identify useful features or preferred variants of the invention ranging from the full scope of the claimed invention which was initially considered to be justified, down to the specific embodiments described. 

Search and examination of an application are necessary in most countries before a patent can be granted. The purpose of the search is to identify documents (whether earlier patent applications or journal articles) which are relevant in assessing whether the invention claimed in the patent application is new or non-obvious the purpose of the examination is for a patent office examiner to assess whether the claimed invention meets all the requirements of patentability and other requirements of patent law. The examination process is an interactive procedure between the patent examiner and patent applicant (or more usually his professional representative) in which the patent applicant may have to put forward arguments and evidence to rebut objections that the patent examiner may have to the patent application. During this process the patent applicant may have to amend (i.e. redefine) the claims to his invention. 

This means that an invention is considered new only if it does not form part of the broadly defined public state of the art before the date of filing of the European patent application (or the corresponding priority-establishing application). The state of the art in the sense of the EPC is not locally restricted. When examining the claims of the patent application with regard to their novelty, the European Patent Office considers prior publication of the invention irrespective of whether the publication occurred in one of the member states of the EPC or elsewhere. 

CLAIMS CITATION includes examiner citations (prior references cited during prosecution of the patent application) against all W.S. patents from 1947. Citations are not directly searchable in the three bibliographic files. 

The first and easiest thing that might be done is nothing at all. The applicant may simply decide not to pursue the invention, and after 12 months, the provisional application is automatically abandoned without any affirmative action by the applicant required it s as if the patent application never existed at all.12 In this regard, it must be reemphasized that a provisional patent application is not examined for patentability by the USPTO and, accordingly, will never give birth to an issued patent.13... 

Approximately 18 months after the international application is filed, the applicant will need to make the decision about whether and where among the various PCT participant countries he wishes to pursue his patent application. It is at this stage that the patent prosecution process gets expensive since separate filing and examination... 

Beyond the honesty in communication (candor) required by the U.S. patent system to issue strong patents, there is an affirmative duty on applicants for patents in the United States to disclose any material information that they are aware of that might affect the patentability of their invention. Although we have already learned that examiners at the USPTO will independently search the prior art during patent examination, they often do not have the familiarity with the subject matter that the patent applicants and their representatives do. This collective duty of disclosure, candor, and good faith are critical to the mission of not only the USPTO but to the applicant as well, for at least three reasons. 

Of course, some bad data are bad data because a measurement or experiment is demonstrably wrong and clearly not representative of the claimed invention, in which case the patent applicants need to use their sound judgment. The applicant doesn t want to drown the examiner in meaningless data points if it obfuscates what could or should be a clear scientific or legal conclusion. 

The issue of whether a reference would be considered important by a reasonable examiner in determining whether a patent application is allowable, including whether the invention is enabled, is a separate issue from whether the invention is actually enabled. 

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