Patent applications prosecutions

Now let s talk about Mike. While Mike did not make nearly as many compounds as Charles (8 versus 30) some of his contributions appear to be inventive. For example, Mike came up with an alternative route that allowed entry into the indole compounds that will be part of the claimed invention. Assuming the process of making those indole compounds is claimed in the final patent (remember that claims can change throughout the patent application prosecution), then there is no doubt that Mike would be an inventor of that claimed subject matter. However, even if the process itself is not claimed, Mike still is likely a co-inventor because it appears that he designed... 

There is no area of patent application prosecution in which rejections for obviousness have been asserted more automatically than in cases involving chemical compounds which are homologs or near homologs of a known compound. Under recent decisions of the courts, while there may be a presumption of obviousness in such cases, the presumption is rebuttable, and a clear showing of different and unexpected properties for the homolog may establish its patentability. 

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. 

Patent prosecution requires a duty of candor that includes a duty to provide material information to the USPTO during the prosecution of a patent application. This duty applies to patent counsel, inventors, and anybody else substantively involved in the preparation of the application and who is associated with an inventor, assignee, or one who is obligated to assign the patent application. Failure to comply with this duty can result in a finding of inequitable conduct, which can render the application unenforceable. The subject of inequitable conduct will be discussed in detail in Chapter 2. 

The use of patent term in this context does not imply that there is 20 or 21 years of enforceable patent life with some limited exceptions, a patent is usually issued before it is enforced against infringers. If one considers that patent prosecution can easily take a few years before any claim issues from the filed patent application, than the enforceable patent life can be markedly shorter than the 20-year patent term. In the context used in this chapter, the patent term refers to the period from the filing date of the earliest patent application relied on for its priority date in the chain (the first-filed provisional patent application in this instant). 

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... 

The duty of disclosure goes beyond just the applicant but includes anybody substantively associated with the filing and/or prosecution of the patent application, such as the inventors, applicants, assignees, and their representatives before the patent office. More will be said about inequitable conduct in section 2.3. 

Although the applicant is free to amend the claims in the patent application during the prosecution of the patent application, he cannot rewrite the claims in any way he pleases. Rather the claims must be fully supported by the text of the patent application as filed any attempt to add matter in the claims that is not supported by the patent application as filed will draw what is often referred to as a new matter rejection, meaning that the applicant has attempted to introduce new matter to the patent application that was not present as originally filed. An attempt to introduce new matter into the claims during the patent prosecution process violates the written description requirement and will be discussed in more detail in Chapter 9. 

Finally, a patent may be subjected to a reexamination procedure in which the issued patent is reexamined in view of additional prior art not of record in the original prosecution tile for that patent application. The reexamination procedure can proceed by different routes, depending on the circumstances, and it can be a very useful tool for patentees but more likely for those who wish to challenge one or more claims in an issued patent but who do not wish to engage in full scale litigation to do so (see section 2.2.c). 

One possibility for seeking a reissue patent includes the situation in which the patentees discover prior art that they were not aware of during the prosecution of the patent application, but that could affect the validity of one or more of their patent claims such that they might tike to narrow the claim(s) to avoid the prior art and thus provide them with the maximum patentable scope for their invention. 

Making claim 6 dependent from claim 1 rather than claim 2 during the prosecution of the original patent application probably would have avoided the problem for Pfizer. Alternatively, the addition of the language... 

The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material contained therein is disclosed to the Office. 

The specific circumstances under which corrections may be made are provided for in 37 CFR 1.48 and in brief depend on whether the correction is after the oath/declaration of inventorship have been filed (1.48 a), the correction is due to a change in claim scope during prosecution of a nonprovisional patent application (1.48 b and c), or the correction is adding or deleting inventors from a provisional application (1.48 d and e). 

I]t was the Vincents who sought a patent on the invention, regardless of whose invention it was. Thus, their inequitable conduct during prosecution of the application leading to the patent renders the patent unenforceable, just as the conduct of an attorney who participates in the prosecution of a patent application may render a patent unenforceable. 

Claims 2—14, 16-22 and 24—37 were the only remaining claims in the application by the time it was taken up on appeal. During the course of prosecuting a patent in the USPTO, it is very common for a patent applicant or their representative to cancel, add and/or amend claims. If and when the claims eventually issue, they will be listed in numerical order starting with claim number 1. 

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