Questions tagged [examination]
This tag is for questions relating to the examination process of intellectual property right applications. For questions regarding patentability please include the patentability tag. Please also include the relevant tag for the kind of protection - invention patent, utility model or design patent.
34 questions
0 votes
0 answers
48 views
Did the examiner force the inventor to narrow the scope of the central concept of this patent?
original patent: https://patents.google.com/patent/US11386172B1/en?oq=11%2c386%2c172 https://patentcenter.uspto.gov/applications/15916086/ifw/docs?application= continued patent: https://patents.google....
0 votes
1 answer
33 views
how are typos that are direct contradictions handled?
For example, if these sentences are written in the specifications: The widget A is configurable. The list A has four options. But the patent drafter actually means to write: The widget A is not ...
0 votes
0 answers
30 views
interpretation of a statement in the specifications
In one of the embodiments in the specifications, a sentence reads "The order of input of the colors is immaterial". However, immediately after this sentence the specification goes on to ...
1 vote
1 answer
35 views
what if the patent examiner finds the specifications to be unclear?
If the patent examine cannot understand the specifications of your invention in the patent application, are you allowed to modify the specifications? If so, what are the rules and limits to do so?
1 vote
0 answers
74 views
When would a reference listed on the patent not be considered for determination of prior art?
In a US patent (re)examination, under what circumstances would a reference not be considered for the determination of prior art, when that reference is cited by the examiner, appears on the front page ...
- 133
0 votes
1 answer
35 views
Hedging claims with this application strategy?
There is, of course, no excuse for submitting a poorly-worded patent application. However, while knowing that more than 20 claims costs extra but is allowable, coupled with the fact that upon PTO ...
- 181
2 votes
1 answer
92 views
Does the classification process of an innovation have to be done by an examiner before he/she select the prior art that'd form an objection on novelty
Good Day to all. I am being challenged by an IP Australia examiner that my innovation lacks subject matter. The examiner however never did classification proceding and presents 4 bits of prior art ...
1 vote
2 answers
166 views
Is it worth it to apply for a preliminary examination in a PCT process?
How does a preliminary examination report help in the PCT and patenting process? What are the consequences and advantages of international preliminary examination? Is it worth it in terms of time and ...
- 91
0 votes
1 answer
92 views
Difficult examiner
How to deal or replace a difficult examiner. He allowed three patents and now he is fighting against a fourth one, which is a subset of them. Could an examiner take action? Override his decisions?
- 171
1 vote
1 answer
67 views
Will a request for expedited examination of a CIP force an office action on a languishing parent application?
I have one patent application filed and two more coming soon, all on the same general subject matter. Application A was filed in 2018 and has yet to see action, and I will soon be filing applications ...
- 217
0 votes
2 answers
71 views
Is there a professional cost efficient novelty search?
I had a novelty search by the UK IPO and it was extremely poor compared to the one by EPO. Maybe the difference in the fees justifies that as it is £300 vs £1,500. Is there any particular office who ...
- 153
1 vote
1 answer
63 views
Non-provisional patent - Examiner error
Base of problem Let's assume timelines as follows. Application examiner just makes error during search. He didn't see that in their database there is provisional patent application for same thing. ...
- 15
1 vote
2 answers
285 views
Contact the supervisory patent examiner (SPE)
I got a response from USPTO about my application: The application is waiting to be assigned a examiner. The SPE has it right now and the SPE name is **** and the phone number is ()-****. My questions ...
- 25
0 votes
2 answers
655 views
Terminal disclaimer filed after final office action
I managed to mess up and filed a terminal disclaimer shortly after the Examiner had already responded with a final office action. The Examiner made it clear in their response that the claims were ...
0 votes
1 answer
88 views
How patent claims are examined by an examiner?
I would like understand how a patent application get examined. Let's say, I have 1 independent claim and 99 level 1 dependent claims. Does that mean, the examiner search for prior art for all 99 ...
- 373