This document discusses the process of patent prosecution, which involves negotiating with a patent office regarding a patent application or issued patent. Key aspects include: - Drafting and filing an application - Responding to office actions that examine patentability requirements and may reject or object to claims - Potentially amending claims, adding arguments, or appealing rejections - Developing a strategy based on the specific office action, such as conducting interviews or deciding how to structure responses - Taking the perspective of both the examiner and potential infringers when prosecuting applications

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Patent Prosecution
Aishwarya Narayan
October 15, 2015
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2. What is Patent Prosecution?
• Interaction and negotiation between
Applicant/ Representative and Patent Office
with regard to a patent application/ a patent
• Strategizing and chalking out plans of action
to handle a patent application/ a patent/ a
patent (application) family
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3. Activities until grant of application
• Searching
• Drafting
• Filing
• Amendment (Voluntary or By invitation)
• Responses to office actions/ examination
reports and (optional) search
• Opposition
• Grant
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4. Patent Prosecution Process
• Inventor shares idea/ invention with
Representative who drafts and files patent
application in chosen patent offices
• Patent offices each individually conduct patent
examination and communicate examination
reports/ office actions to Representative
• Representative responds to examination report/
office action within stipulated timeframe
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5. Requirements for grant of a patent
Patentability Requirements:
1. Subject matter eligibility
2. Industrial applicability
3. Novelty
4. Non-obviousness
5. Specification support and correctness
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6. Subject matter?
Can anything man made be patent eligible?
Machine or Transformation test
Bilski v. Kappos
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7. What is Novelty?
• Newness/ Uniqueness
• Functionally enabling elements
… but how do you determine the newness or
uniqueness of a claimed invention?
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8. What is Non-obviousness?
• Is not predictable
• Difference should be more than a trivial
element
… but how is it different from Novelty of a
claimed invention?
KSR International Co. v. Teleflex Inc.
KSR v. Teleflex
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9. Specification support
• Importance of claims in a patent application
• Mere mention of word or term in the
specification
• Enablement from specification (person with
ordinary skill in the art)
• Interdependency of specification and claims
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10. Requirements for prosecuting a patent
application
• Knowledge of the technology
• Technical details of the invention
• Knowledge of Constitution, Statutes and
Common Law in the relevant jurisdiction
• Timely monitoring of progress of patent
application
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11. Office Actions (OA)
• Usually a 1st OA or Examination Report on the
merits and a final OA or Examination Report
• Rejection of claims – Examiners rely on the
statutes and case law to reject claims on the
merits
• Objection to specification and/ or claims –
Examiner objects to formalities
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12. Types of Objections
• Errors in the specification, or informalities in
the application
• Missing application-related forms or non-
payment of fees
• Any other non-technical objections such as
excessive number of claims or translation of
application
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13. Types of Rejections
• Rejection based on Unity of invention
• Rejections based on:
1. Lack of Novelty
2. Obviousness of invention
3. Ineligible or non-statutory subject matter
4. Lack of support from specification
5. Lack of utility of invention
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14. Restriction Requirement
• When examiner believes claims directed to
more than one independent and distinct
invention
• Response – accept or traverse, but must elect
a group of claims to have examined even if
restriction is contested
• Non-elected claims can be examined in a
continuation or divisional application filed
later, but while parent application still pending
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15. RESPONSES to OAs
• Amendments to claims
• Addition of claims as long as no “new matter”
is added
• Added claims must find support in the
specification as of filing date of the application
• Cancellation of claims
• Making persuasive arguments
• Appeal
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16. Strategy and guidelines
Based on the office action issued by patent
offices, strategies may be built on a case-by-
case basis including:
• Conducting examiner interviews, where
allowed and amending claims with examiner
suggestion or input, when given
• Deciding on the type of response to be drafted
etc.
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17. Prosecution Mindset
• Eye for detail
• Various ways of writing
• Putting self in examiner's shoes
• Putting self in infringer's shoes
• Finding loopholes in office action
• Assessing rejection strength
• Knowing weaknesses in our case
• Use of case laws
• Breadth of claiming and specificity
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18. Thank You
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