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The Patent Process

Postby apapage » Wed Jul 29, 2009 9:55 pm

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Hey all,

I've been reading some of the posts in the forum and there seems to be some misunderstanding about the patent process especially when it comes to active prosecution so I thought I would clarify.

After you have decided that you want or need to file a patent, you need to determine what type of patent to file. The three most popular are: provisional, utility, and design. Utility and design applications are the only ones from these three that will be examined. Examination means that the examiner performs a prior art search and prepares an office action informing the applicant of the results. The results are documented in a non-final office action. Applicants shouldn't be alarmed with the thought of a rejection. They are very common especially in certain art units (business methods/biotech). Even though the application has been rejected, it is still pending. You do not need to file another application. Applicants must, however, reply to the office action. The reply is the device that applicants and their attorney use to convince the examiner to allow the patent. After the examiner considers the reply, he will either issue another non-final office action, a final office action, or a notice of allowance, depending on the substance of the reply. With a non-final office action prosecution is still open, which means you can file another reply. With a final office action and a notice of allowance, however, prosecution is closed so your ability to continue prosecuting the application is limited. You can file a reply to the final office action, a notice of appeal, and/or a request to reopen prosecution (RCE). Prosecution may be reopened more than once, but I prefer not to file any RCEs except in a few instances. You can file a continuing application (continuation, divisional, or continuation in part) at any time while the parent application is still pending.

Hope this helps.

Re: The Patent Process

Postby Levi Porter » Fri Jul 23, 2010 12:02 am

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So, isn't a reply to a Final Action a form of an RCE? Or is it more like just saying, Hello there, these are the revisions that should address the concerns hindering a Notice of Allowance.

If you could get it reopened, filed a continuation application, how much time would you have to get things in order?

Re: The Patent Process

Postby apapage » Fri Jul 23, 2010 6:49 am

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A reply to the final is not an RCE, it is more of another attempt to convince the examiner to allow the application except the only things that one can do in a response to a final are things that will place the application in a condition of allowance. For example, you may present arguments and/or an amendment. Amendments that add additional limitations that require further consideration will not be entered and the applicant will have to file the RCE to have those amendments considered. The best case scenario on final is to have claims that were deemed allowable if rewritten in independent form. This amendment in a response to a final will/should result in an allowance without an RCE.

Re: The Patent Process

Postby Levi Porter » Mon Jul 26, 2010 1:37 pm

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Thank you apapage,

It is quite a benefit that you are here. I hope others appreciate the value of your volunteered time and information.

Thanks again,

Levi

Re: The Patent Process

Postby apapage » Thu Jul 29, 2010 5:14 pm

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Glad to help.

Re: The Patent Process

Postby kalens99 » Fri Jul 30, 2010 3:21 pm

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I am glad to hear from you Apapage. I am putting together a community for engineers and entrepreneurs and many of them may need your help. Are you looking for clients? It sounds like they would be happy to speak with you.

I can PM you if you like.

Kalen