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[Ryan]

Just out of curiosity, what happens after the First Office Action?

I see two possible scenarios: the patent is granted, or it is not (which makes a case for appeals). If a patent is granted, I understand that publication fees will be paid. When would one be notified that their patent has been granted, so that these fees may be paid?

In the case of it being denied (as per 75%, last I checked), when would you receive notice, so that one might file an appeal? And how long until the second office action?

Lastly, assuming that a patent is granted and the publication fees have been paid, but the patent has not yet been published (I've read it takes about 3 months for publication from the grant date), how soon can someone be prosecuted for infringement?

Many thanks,
Ryan

[eric stasik]

Ryan,

Short and sweet: it depends. Without exploring all the diverse possibilities (of which there are many), the most likely first office action is a rejection of some (usually all) of the claims because they are anticipated by prior art, or obvious to "one of ordinary skill in the art" which in practice means "the examiner."

You file a formal response (within an alotted amount of time) arguing (nicely) why the examiner is wrong (mistaken) and maybe make an amendment to the claims to address the examiner's rejections (or objections).

If the examiner is unimpressed with your response (as she often is) she will make a second rejection over the same prior art AND make it a final. (While a final rejection is at the examiner's discretion, she is encouraged to do this by the incentives presented her by patent office practice.) Essentially you get one chance to argue with the examiner over any piece of prior art.

After a final action, you have the option (among others) of accepting any amendments suggested by the examiner, filing a continuation application (a not very complicated administrative procedure which basically boils down to paying a new filing fee and starting over from the beginning), or letting the application go abandoned (and forever forfeiting your right to a patent.)

Please do not let this simple quick answer suggest to you that the process is simple. It's honestly not simple at all and depending on the circumstances it could be very complicated indeed.

How you write your reply, the words you use, etc. will all become part of how the patent is interpreted in the future.

You can minimize your costs by doing a lot of the work yourself, but it would be frankly stupid to not engage a qualified U.S. patent attorney or agent before sending any response to the patent office. (But not me. Although I am a registered U.S. patent agent, I don't do filing and prosecution.)

Happy holidays.

Regards,

P.S. I'm not trolling for work on this board (I participate just to keep my patent knowledge sharp and up to date) so when I tell you to consult a professionial, I don't have any self-interest in my recommendation. For whatever that's worth to you.

[M. Arthur Auslander]

Dear Ryan,

The patent examiner is substantially obigated to reject an application so as to set up a record that the invention is new, useful and unobvious.

The rejection should be reponded to to set up a record that will be available if there is any challenge to the patent, particularly in the courts after the patent has been granted.

Patents are routinely granted unless they or Very obvious. The importance of a patent is to have broad unavoidable claims. This does not happen very often.

A patent on a very novel invention can still be optained even it is an infringement of the prior issued patent. Trade Secret is an alternative to a patent if there would be difficulty figuring out how the result is optained when it is available.

I didn't realize how much there is to consider until I started to write.

There is a scam industry that makes $100M a year getting patents. Only one in ten thousand get back more than they pay. There are legitimate patent lawyers that also get patent that are of no value.
There are few patents nowadays as original as the Edison Electric Light Bulb.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
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[Ryan]

Thanks.

I am well aware of the scam industry (I've been searching the patent database and reviewing patent law for the past several months). I also know that these seas are both deep and wide; anything can happen.

I understand the patent examiner's job as well. The conflict lies between designing a patent application that is both broad and abstract enough to encompass as wide an area as possible, and keeping the patent application focused and concrete such that the examiner will approve it.

A funny article I read a while back said that if the patent examiner approves your application in the FOA, you did not make the claims broad enough...

I'm just curious for the timeline, as nothing happens for two or three years after filing, then a lot happens in rapid succession. And I, I am stalking that most elusive (and contraversial) of patents: the Software patent.

Thanks again,
Ryan

[eric stasik]

Ryan,

Nothing at the USPTO happens in rapid succession. It may take 12-18 months to receive a first office action. You are normally given a shortened statutory period to reply (30-90 days) and you should expect a similar length of time (or longer) to pass before you receive a reply. Last time I checked the average patent in software had a pendency of 28 months.

Use the time wisely.

Most of the controversy surrounding software patents derives from "trivial" patents. While these are actually rather uncommon, it happens often enough to give the USPTO and software patents a bad name.

Partly this is the result of USPTO practice to rely on prior US patents as prior art. Since software is a relatively new area of patenting, there may be a dearth of prior art US patents.

You would do yourself a big favor by spending your time researching prior art patents and non-patent literature for relevant prior art. Make sure to present to the examiner all of the relevant prior art you find. (You are not only obligated to do this, but it also serves your own interest.)

When it comes time to enforce or license your patent, there are two common defenses: 1) the patent is invalid, and 2) the patent is not infringed.

If the only prior art on your patent are the references the examiner has found, you will never get past 1). This is almost a guarantee. If you make sure all of the best prior art is submitted to the patent office, it will be far more difficult to challenge the validity of your patent and your chances of moving the discussion on to item 2) are grealty enhanced.

There are differences of opinion on this, but based on my experience you would be well-served by doing an extensive search and presenting to the examiner all of the relevant prior art which bears on the claims you present. I personally do not believe you are well-served by dumping a mountain of prior art on the examiner's desk, but only that art which is truely relevant. (Again there are differences of opinion on this.)

An honest good faith effort is not only the rule, it is very much in your own best interest.

You will find it far easier to argue prior art with the examiner than with attorneys at IBM or Microsoft. Once the prior art has been presented to the patent office, it will be virtually impossible to challenge the validity of your patent based on this art.

Your goal should not be to simply get a patent granted with the broadest claims, but to get a patent granted whose validity will be difficult to challenge when it comes time for licensing and enforcement.

Good luck.

Regards,

[Ryan]

Haha. As it happens, there is a Mr. Smith (I kid you not) from IBM whose patent I studied and provided an argument against (inside the app). His patent (actually, it was group, but he appears to be the primary inventor) covers an aspect that I wished to include in my own. Or rather, it is similar...but not similar. You understand.

Anyway, my blood froze when I read that one patent. And it came out (literally) a few days before I considered filing. A few quick clarifications, and all is well (for now). I included a few other patent references, but they are not in any danger of hurting my app (it would appear that I am exploring a realm with very few pieces of prior art...either that or I am missing something).

And before anyone asks, the app has nothing to do with a one-click anything or sending a file over the internet to a {computer, watch, phone, etc.}.

I wonder if the USPTO will survive long enough for that day to come. It would appear that MS, IBM, and a string of others are destroying the USPTO...how much more can it take?


As for the claims section, things could get interesting...it was designed with the idea of broad control within a narrow scope. It was written in good faith (I am not out to scam anyone), keeps far away from everyone else's IP, but maintains absolute control over the utility. Hmm, time will tell whether the patent examiner agrees. Time is running out.

Oh yeah, and before I sent it in, I had an ex-patent examiner review it for validity (syntax check, not prior art...out of her league). The place I work at has funny people like that.

Cheers,

Ryan

[JimIvey]

Just a couple quick notes on a couple of points you made.

First, I used to say that allowance on the first Office Action means you didn't claim broad enough.  That was more true in the mid 1990s.  You see fads/trends in rejections in the Patent Office.  Then, it was everything was always rejected on the first Office Action and anything that could be implemented by computer was given a Section 101 (improper, "non-statutory", subject matter).

More recently, I've seen very broad claims allowed on the first Office Action.  It comes down to how well you know the closest prior art and how well you address it in your original filing (or in a preliminary amendment).  Most often, the Examiner finds prior art I either never knew of or hadn't considered in the precise manner the Examiner interprets it (or more typically, the Examiner finds an interpretation of claim language I hadn't considered before).

It's still quite possible that claims allowed on the first Office Action are too narrow.  But it's not always the case anymore.

Incidentally, to me, "FOA" means final Office Action.

Re software patents being elusive, not for me and not anymore.  If you're doing your own work in that regard, browse the USPTO web site and search for their Guidelines for Examination of Computer Implemented Inventions (or something to that effect).  It will provide a good road map as to how to frame your applications -- and particularly your claims.

One example that stands out was one involving signal interpolation/decimation which involved almost nothing but mathematic algorithms -- a clear no-no in claims in the US.  After spending some time with the Guidelines, I decided to characterize the claims as "a method for deriving a resulting digital signal from an pre-existing digital signal, the method comprising: ...."  Converting a physical thing to a different physical thing brought me out of the mathematic algorithm quagmire.  The Guidelines are quite helpful in showing you how to frame your invention to get it allowed.

Software is still a specialty, but it's not nearly as difficult to patent as it once was.

Regards.

[M. Arthur Auslander]

Dear Ryan,

The bain of my career has been the patent I got for a friend that was allowed very early, I think after the first office action with very little amendment, if at all.

It was a great patent. Our disclosee got a $50,000,000 prize for a similar device that was more complex and in fact not as good.

The retrospective lesson was that we should have patented in China where the simplicity of the invention would have worked for their economy.

My feeling is that if there has  been a search most patent applications are granted with modified claims. The first office action sets the stage. The examiners are not usually out to rough you up, they want you to do it as they see is right.

The question is when is it worth it or necessary to really fight for more than the examiner is willing to give? Most examiners are both good and fair.

I can only recall one examiner who was very very bright and seemed to be in a rage when it came to dealing with him. He must have burned himself out since I heard that he died very young.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensive™
Reality Check®