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[Arvind]

what is post allowance review? can somebody briefly provide me unstructured process of same?

[Jonathan]

In a nutshell, it refers to reviewing an application/application history for items that could be problematic to correct  (or sometimes impossible to correct) once a patent issues.

Some examples to look for:

a) Are you aware of any non-cumulative, material information not made of record in this case by the examiner? (Make sure Examiner initialed all submitted 1449 forms)

b) is a supplemental oath required for any amended claims (rule 67)?

c) Further filings? (restriction, continuation, etc)

d) Any foreign filing license issues?

e) If application is based on a foreign application, has a certified copy of the foreign app. been filed?

f) Does a priority claim need to be added or corrected?

g) Any corrections needed to the spec or figures?

h) Is a biological deposit required?

i) Entity status, pay large entity status if applicant was previously paying small but changed to a large entity.

[Isaac]

Would you include reviewing the Examiner's reasons for allowance in your list?

[Jonathan]

Yes, certainly. Thank you for reminding me..  

On that note, required corrections for figures or other requirements are sometimes buried in those pages after the Notice of Allowance summary sheet that are not listed on that summary sheet. I have not seen it happen too often but it has happened to me nonetheless. Luckily I caught it those times it did occur.

Another thing to add to my list - if there is no requirement for replacement figures, with the NOA or at some point prior to the NOA, your application WILL be printed with the as-filed figures. So if hand-drawn figures or combination of  formal figures with extra hand-drawn lines, etc meet the application publishing guidelines for margins, and no one at the PTO asks for new drwings, those informal or semiformal figures will be on the published patent.

I learned that one the hard way, unfortunately. One figure had a hand-drawn feature on an otherwise computer-generated image and that particular figure was on the front page of the patent - DOH!

[Isaac]

Other things you might want to do is make sure you there is no continuation that needs to be filed during the pendency of your application and that there are no IDS that need to be filed (maybe from foreign OAs).

Obviously those things don't have to wait until you are in an allowance situation, but the consequences for a mess up are painful enough that it's worth doing a final check.

[dbmax]

Would you include reviewing the Examiner's reasons for allowance in your list?

An old thread, but,

Two questions:

1) If an examiner has misread a reference and allowed your app over the reference for the wrong reasons, what do you do?

2) If on review you have new 112 (indefinite) concerns about a claim post allowance, what are your options?

db

[khazzah]

Would you include reviewing the Examiner's reasons for allowance in your list?

An old thread, but,

Two questions:

1) If an examiner has misread a reference and allowed your app over the reference for the wrong reasons, what do you do?
2) If on review you have new 112 (indefinite) concerns about a claim post allowance, what are your options?

Are you asking the limited question of "what you do in the Comment on Reasons for Allowance" Or the bigger question of what to do in general, which might include something other than filing a Comment on Reasons for Allowance?

[JustAnotherExaminer]

Would you include reviewing the Examiner's reasons for allowance in your list?

An old thread, but,

Two questions:

1) If an examiner has misread a reference and allowed your app over the reference for the wrong reasons, what do you do?

2) If on review you have new 112 (indefinite) concerns about a claim post allowance, what are your options?

db

If it's an anticipatory reference you should take action as any patent to issue would be invalid.  You would need to file an amendment to the claims, unless prosecution is closed, in which case you need to file an RCE + amendment.

If the examiner is importing limitations into the claim language at a time of allowance (which we are explicitly told never to do), there is a generic "comments on reasons for allowance" that applicants usually file in such a situation.  Similarly, if it was a 103 rejection the examiner determined was overcome for certain reasons, perhaps to your disagreement, there is a fairly standard response paragraph.

[dbmax]

Karen and JAE,

1) The allowance was correct, but in commenting on a reference the examiner appears to have read into the reference disclosure a limitation that was not there, and was barely relevant.

From MPEP 1302.14

The examiner's statement should not create an estoppel. Only applicant's statements should create an estoppel. The failure of applicant to comment on the examiner's statement of reasons for allowance should not be treated as acquiescence to the examiner's statement.

So the question is, is it more common to comment on the reason for allowance in such circumstances, or to let sleeping dogs lie, or to do something else?

2) The second question relating to 112 issues is unrelated to the first. Is it advisable or acceptable to use an amendment after final  to correct a potential 112 defect. Should it involve an interview?

Thanks,

db

[khazzah]

Is it advisable or acceptable to use an amendment after final  to correct a potential 112 defect. Should it involve an interview?

Thanks,

db

CFR 1.312 is quite strict, saying that there are no amendments as a matter of right after Notice of Allowance.


The MPEP is more permissive, and distinguishes between amendments that change claim scope, and those that don't.

MPEP 714.16 allows the Examiner to enter amendments after NoA wich "merely embody the correction of ... formal matters in a claim without changing the scope thereof." OTOH, if you change the claim scope you must explain why the Examiner should enter the amendment.

So .. the question is ... does the amendment you have to address a possible indefiniteness issue change the scope of the claim?

If your issue really is indefiniteness, say removing "substantially" because you're worried that's indefinite, then I say this does affect claim scope. That means you'll have to convince the Examiner to enter the claim. Generally, I don't make such amendments after NoA.

If your issue is strictly antecedent basis, then it depends. If the independent recites "a widget" and the dependent says "wherein a widget is brown" ... then I say that's form, not scope. That is, the claim scope was already limited to the widget in the independent, and anyone reading the claim could figure that out. I would feel comfortable making this amendment NoA.

OTOH, if your dependent referred to "the widget" and the independent include both "a first widget" and "a second widget" and then you want to amend to "the first widget" ... then I say that's a change in scope.

[NJ Patent1]

dbmax: 

Concerning question 1.,  if the Examiner has "found" and element or limitation in a reference that you don't think is there and, notwithstanding, still allows the claim, your client is in a good position.  I'd go so far as to say golden. Remember the presumption of validity, the clear-and-convincing standard, and deference to the Office's "special expertise". 

In my experience, a court ajudicating the validity of a claim will consider Examiner's reasons for Allowance as part, but only as one part, of the prosecution history.  But your response, or lack thereof, would likely only come  into play if the reasons for allowance included a limiting, not expansive, synopsis of the art vs. the claims.  In your particular scenario, as I best understand it, I'd take the money and run. 

     If there is a bona fide 102 issue, as posited by "JustAnother", you need to remostrate with the client. But keep in mind - as I understand the comment - the reference was before the Examiner during examination.  Even if the Office called a "strike" as a "ball", a challenger will bear a "heavy burden" if they wish to invalidate the patent as anticipated by that reference that was before the Examiner.

     Concerning question 2, what paragraph of 112 are you referring to?  In my experience, the Office routinely allows claim with blatant failure of anteceedent basis.  These are a pain to opine on.  Shame on the Office for missing these things.  The command to not "rewrite claims" just to preserve their validity not withstanding, I don't recall a case in which the CAFC scuttled a claim on this basis. 

[dbmax]

1) On the first question the examiner (parenthetically) found the reference directed to an unrelated branch of the art, suggesting that she did not evaluate the actual difference between the reference and the current app, but an imagined difference. In either case the reference clearly did not anticipate, but I was curious about the advisability of commenting on the reasons.

2) On the second question, Karen guessed correctly that the potentially indefinite language involved the term "substantially."  (not antecedent defects) Not overly worrisome, given the presumption of validity and the examiner's note of the spec's discussion of robust dimensional tolerance, but a possible impediment to sale of the the IP.

Thanks

db

[khazzah]

     If there is a bona fide 102 issue, as posited by "JustAnother", you need to remostrate with the client. But keep in mind - as I understand the comment - the reference was before the Examiner during examination.  Even if the Office called a "strike" as a "ball", a challenger will bear a "heavy burden" if they wish to invalidate the patent as anticipated by that reference that was before the Examiner.

I agree with NJ, and disagree with practitioners who say "problem with the patent" always means "fix it because it's sure to be invalidated".

Some clients want bullet proof patents and would go to the trouble of filing their own reexam to get the patent in the Examiner's face. Other clients would be quite happy with an issued patent even knowing that a reference before the Examiner, may read on the claims -- in one man's opinion. Since there is no Rule 56 issue here, either choice is defensible.