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patent_type
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Re: Patent Pending Infringement
« Reply #20 on: Sep 25th, 2007, 7:51pm »
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Be vewy vewy cahfwel with the accelerated examination procedure.  I have heard (saw some stat somewhere--PatentlyO blog, maybe?) that 80+% of these are getting kicked back for failure to conduct an adequate search.   So don't try this at home!
 
If you do sucessfully get accelerated examination, there is a high likelihood that the representations you have to make during that process will result in unwanted limitations to your protection.  While there have been some patents granted on the new accelerated examination process, I don't think there have been any in litigation in which claims have been construed.
 
If anybody knows of one that is in litigation, let us know!
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JimIvey
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Re: Patent Pending Infringement
« Reply #21 on: Sep 25th, 2007, 9:38pm »
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on Sep 25th, 2007, 7:51pm, patent_type wrote:
Be vewy vewy cahfwel with the accelerated examination procedure.  I have heard (saw some stat somewhere--PatentlyO blog, maybe?) that 80+% of these are getting kicked back for failure to conduct an adequate search.   So don't try this at home!

I haven't done one fo these under the new rules, but I've done them under the old rules.  Never had a problem.
 
I've read in blogs, too, (from an anonymous examiner, I think -- or perhaps even in here years ago) that examiners like to reject such petitions on those grounds (under the old rules).  There was no requirement under the old rules of a specific type of search.  It just said the applicant must conduct "a search."  
 
I would be tempted to re-petition based on the fact that the examiner's assertion that the search was inadequate represents a concession by the examiner that a search was, in fact, conducted albeit not to the examiner's liking.
 
I honestly don't know if the new rules require a specific type of search.  If it does, it provides us all with better guidance as to how to meet the search requirement.  If it doesn't, then any old search should suffice -- at least according to the wording of the rules.  
 
I have to admit that I find it extraordinarily frustrating that the Office seems to be trying to do everything in its power to avoid examining patent applications.  The refusal to fairly and competently review petitions for expedited examination is just another example.  Is it really that hard to find someone to run the PTO that thinks that the PTO ought to actually examine applications?!  After all, isn't that the reason the PTO exists?
 
Regards.
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patent_type
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Re: Patent Pending Infringement
« Reply #22 on: Sep 26th, 2007, 8:02am »
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on Sep 25th, 2007, 9:38pm, JimIvey wrote:

I honestly don't know if the new rules require a specific type of search.  If it does, it provides us all with better guidance as to how to meet the search requirement.  

 
The accelerated examination procedure (went into effect 8/25/06) is much more draconian than the previous petition to make special.  The accelerated examination procedure replaces the old petition to make special for almost every reason we used to file petitions to make special (excepting age, health, and the PPH pilot program).
 
The accelerated examination procedure requires a document remarkably similar to the Examination Support Document (ESD) that is part of the new (Nov. 1) rules and the requirements are very specific about exactly how the search must be conducted.  In fact, this document is called the AESD--accelerated examination support document.
 
See http://www.uspto.gov/web/patents/accelerated/  
 
excerpt: "the accelerated examination support document must include an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference. Applicants should specify where in each of the cited references the particular claim limitations are found. "
 
A search must include (details omitted):
 
1.      A classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified.  
 
2.      A text search of the US patents and published patent applications of individual features by themselves and combinations of features covering the broadest scope encompassed by the claims as well as claims of narrow and intermediate breadth.
 
3.      A text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements.
 
4.      A text search of the suggested non-patent literature (NPL) resources from the current USPTO search templates.
 
5.      A search employing any special tools as identified in the current USPTO search templates.
 
The requirements are tremendously more onerous than the previous petition to make special requirements.  If you don't meet these search requirements, as determined by the Examiner, the request for accelerated examination is kicked back.
« Last Edit: Sep 26th, 2007, 8:06am by patent_type » IP Logged
DJoshEsq
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Re: Patent Pending Infringement
« Reply #23 on: Sep 27th, 2007, 12:29am »
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on Sep 25th, 2007, 9:38pm, JimIvey wrote:

I haven't done one fo these under the new rules, but I've done them under the old rules.  Never had a problem.
 
I've read in blogs, too, (from an anonymous examiner, I think -- or perhaps even in here years ago) that examiners like to reject such petitions on those grounds (under the old rules).  There was no requirement under the old rules of a specific type of search.  It just said the applicant must conduct "a search."  
 
I would be tempted to re-petition based on the fact that the examiner's assertion that the search was inadequate represents a concession by the examiner that a search was, in fact, conducted albeit not to the examiner's liking.
 
I honestly don't know if the new rules require a specific type of search.  If it does, it provides us all with better guidance as to how to meet the search requirement.  If it doesn't, then any old search should suffice -- at least according to the wording of the rules.  
 
I have to admit that I find it extraordinarily frustrating that the Office seems to be trying to do everything in its power to avoid examining patent applications.  The refusal to fairly and competently review petitions for expedited examination is just another example.  Is it really that hard to find someone to run the PTO that thinks that the PTO ought to actually examine applications?!  After all, isn't that the reason the PTO exists?
 
Regards.

 
you should review the rules before you post.  Nice post patent_type.
« Last Edit: Sep 27th, 2007, 12:30am by DJoshEsq » IP Logged

D. Joshua Smith, Esq.
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Re: Patent Pending Infringement
« Reply #24 on: Sep 28th, 2007, 7:53pm »
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Thanks, Patent Type.
 
Anyone have one bounced for inadequate search under the new rules?  The rules seem to provide a nice checklist that should make avoiding such rejections relatively easy.  The toughest part appears to be determining "the Class and subclass where the claimed invention is most likely to be classified."  It looks like a "get out of jail free" card for people hoping to reject such petitions since it will be particularly difficult to guess right every time.  Anyone have any idea how that might play out?
 
And, DJosh, thanks for the example of a useful post.
 
Regards.
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