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Author Topic: Incomprehensible OA's and patents  (Read 2039 times)

Warren Barquist

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Incomprehensible OA's and patents
« on: 04-07-17 at 06:27 pm »

I passed the patent bar awhile ago.  Btw, I never studied patent law in school.  These patents and OA's are sooo incomprehensible.  PLEASE, I need one or two good handbooks on PATENT PROSECUTION.  ANY advice will be appreciated.
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MYK

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Re: Incomprehensible OA's and patents
« Reply #1 on: 04-08-17 at 04:20 am »

If you've passed, you should know at least the basics about how to figure out what an OA is saying and what your argument options are.
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Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

Toot Aps Esroh

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Re: Incomprehensible OA's and patents
« Reply #2 on: 04-08-17 at 01:08 pm »

While I haven't read either, lurking here over the last while I've seen frequent recommendations to a book by a Mr. Pressman "Patent It Yourself" (inventor-facing, but apparently walks the inventor through how to handle patent application rejections; maybe a little dated vis-a-vis the AIA) and to one by Mr. Slusky called "Patent Lawyer's Guide".
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still_learnin

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Re: Incomprehensible OA's and patents
« Reply #3 on: 04-12-17 at 11:41 am »

I passed the patent bar awhile ago.  Btw, I never studied patent law in school.  These patents and OA's are sooo incomprehensible.  PLEASE, I need one or two good handbooks on PATENT PROSECUTION.  ANY advice will be appreciated.

I only know of two books on patent prosecution. Both are expensive.

The first is suitable for beginners:
U.S. Patent Prosecutors Desk Reference by Graham and Marlow
http://store.lexisnexis.com/products/us-patent-prosecutors-desk-reference-skuusSku-us-oxf-04649-Softbound
I wasn't a big fan of the 1st edition, but I was an experienced prosecutor by then, so my viewpoint was different from someone just starting out. 

The second is a multi-volume treatise, definitely not for beginners:
Patent Prosecution: Law, Practice and Procedure by Donner
https://www.bna.com/patent-prosecution-law-p17179874147/
I have this one (bought it used, but still not cheap), and find it a valuable reference.
« Last Edit: 04-12-17 at 03:30 pm by still_learnin »
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Robert K S

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Re: Incomprehensible OA's and patents
« Reply #4 on: 04-12-17 at 12:24 pm »

I have used and liked the Donner treatise, which I think might be three or more volumes in its latest edition, but it's not for beginners.  Find Patent It Yourself or Faber on Mechanics of Patent Claim Drafting at a library.
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still_learnin

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Re: Incomprehensible OA's and patents
« Reply #5 on: 04-12-17 at 03:29 pm »

I have used and liked the Donner treatise, which I think might be three or more volumes in its latest edition, but it's not for beginners.  Find Patent It Yourself or Faber on Mechanics of Patent Claim Drafting at a library.

I read the OP's "prosecution" narrowly -- how to argue rejections -- and didn't think of claim drafting. But amending claims is, of course, a huge part of prosecution. So, yeah, I agree that Faber would be a good resource for prosecution.
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Robert K S

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Re: Incomprehensible OA's and patents
« Reply #6 on: 04-12-17 at 03:44 pm »

It's all interrelated.  If you read Faber it's mostly about prosecution/litigation because the idea is to draft claims that don't make the same mistakes that killed the claims according to the PTAB/courts.

Plus once you start to understand how claims are drafted and why/how they need to be supported in the spec, you start to grasp why specifications are written the way they are.
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Warren Barquist

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Re: Incomprehensible OA's and patents
« Reply #7 on: 04-15-17 at 11:54 pm »

Thanks everyone for your insights!
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ExaminerEsq

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Re: Incomprehensible OA's and patents
« Reply #8 on: 06-06-17 at 10:20 pm »

You could always find a patent of interest to you (e.g., an iPhone patent) and read the file wrapper on PAIR.  I would read the spec, drawings, and claims to get a sense of the invention.  Then read the office action and download the cited references from Google Patents or another free patent pdf site.  Try to understand how the examiner is rejecting the claims.  Then read the response from the applicant to see what arguments were made in response and how the claims were amended.  Think to yourself, would you make similar amendments?  Read through the back-and-forth between applicant and examiner. Do this for a couple of patents and you'll get a sense of how prosecution works.
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jothya

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Re: Incomprehensible OA's and patents
« Reply #9 on: 06-09-17 at 12:01 pm »

I was in similar shoes when I first started.  I was at a small firm run by a patent agent, and got very little guidance on how to traverse rejections.  I bought Faber [http://www.pli.edu/Content/Treatise/Faber_on_Mechanics_of_Patent_Claim_Drafting/_/N-4lZ1z11d7q?Ns=sort_title%7c0&ID=262323], which looks like it's on the 7th edition, and found it to be a great resource.  Also, like ExaminerEsq suggested, I found reading IFW's for patents and applications very helpful with organizing a response to an Office action.  A whole ago I came across Patent Box [https://www.thepatentbox.com/], which, with a free account, allows you limited ability to search through file wrappers using search terms - you may want to spend some time there too.
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ChrisWhewell

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Re: Incomprehensible OA's and patents
« Reply #10 on: 06-10-17 at 10:12 am »

I passed the patent bar awhile ago.  Btw, I never studied patent law in school.  These patents and OA's are sooo incomprehensible.  PLEASE, I need one or two good handbooks on PATENT PROSECUTION.  ANY advice will be appreciated.

seek a mentor or a tutor, and go over real live cases with them.  Experience is the best teacher.  Are you a member of any state bar ?
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Chris Whewell
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Warren Barquist

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Re: Incomprehensible OA's and patents
« Reply #11 on: Yesterday at 01:57 am »

Thx again for all these great pieces of advice.  This blog is the absolute best.  I cannot thank u all enough.  Yes, I'm a mbr of NY and NJ bars.  Happy Thanksgiving!
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