Patent prosecution

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... 

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. 

Let s consider a hypothetical patent prosecution example representative of how applications flow through the patent process in the United States. In this hypothetical example, you will come to better appreciate the way in which an office action rejection by the USPTO is conveyed to the applicant as well as the way an applicant might attempt to amend the claim to overcome that rejection. 

Patent prosecution sits at the busy intersection where complex legal and technological issues intersect. In the crowded dockets of USPTO examiners as well as the... 

Because it is such an important topic and because the inventor is a party whose actions and statements can directly affect the outcome of the patent prosecution, the entire substance of the duty of disclosure, candor and good faith is produced here for you to read in its entirety before further explanation and some real examples from actual court cases. 

An anticipatory prior art reference must be enabled as of the date of the applicant s invention. In this example, all of the references were in existence before the chemist s discovery. However, patent prosecution can sometimes take a long time so that a prior art reference that was not enabled when the invention was discovered may be enabled by the time the claims get examined, this is more likely in fast-moving biotech areas. For purposes of the claim examination in this context, the date of the invention is the date that needs to be considered. 

The patent prosecution history is also considered to be part of the intrinsic record and is publicly available for applications that have published. 

Issues related to prior art enablement, prima facie obviousness and secondary considerations of nonobviousness often intertwine in obvious determinations during patent prosecution and litigation since their definitional boundaries are often not well demarcated. In the case Sterling Drug Inc. v. Watson,69 the USPTO rejected claims to various single enantiomer compounds,70 and this decision was appealed to the U.S. District Court for the District of Colombia. The claims in question—10,12, and 14—are presented in Figure 8.18 together with the claimed structures (L-arterenol is the neurotransmitter norepinephrine).71... 

In the section emphasis has been placed on the three key components of written description, enablement, and best mode. Each of these three requirements is separate and distinct, so that is how they will be treated in this chapter. Though it might seem obvious, each of the three sections of the written description requirement applies to the claimed invention only. It is surprisingly easy to get caught up with peripheral aspects of the invention that do not directly involve claimed elements and, as a result, overinterpret the ambit of 112 f 1. Likewise, it is easy to forget that written description is required for all of the elements in a claim and as a result, attempt to make claim amendments during patent prosecution that do not find adequate written description support in the patent specification. Making the claim elements the focus will help to keep one on track with respect to 112 f 1 issues. 

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