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 1 
 on: Today at 06:14 am 
Started by abhia lRoomb - Last post by abhia lRoomb
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 2 
 on: Today at 03:34 am 
Started by Raja - Last post by bartmans
Hi Raja,

The only public database that I know off where it is possible to search for agent data is Patenscope from WIPO. You can do this by searching the name of the agent firm in the 'rpa' filed (in advanced search mode type: rpa agent)

 3 
 on: Yesterday at 09:51 pm 
Started by dab2d - Last post by smgsmc
I'm a patent agent, not a patent attorney.  If we're concerned strictly with patent prosecution, I don't understand why the issue of UPL is even raised in the first place.  After all, patent prosecution does not require the services of an attorney; i.e., patent prosecution can be performed by a non-attorney patent agent and by a non-practitioner pro-se inventor.

Also, how does this situation differ from the following scenario in which probably most practitioners have found themselves facing more times than they wished:  The inventor client thinks he knows how to respond to an office action better than the practitioner can.  The practitioner explains to the inventor why the inventor's response is not a wise choice and recommends an alternative response.  But the inventor digs in his heels and insists that the practitioner file the inventor's response.  Is there a similar UPL issue (assume a US inventor)?  So in your case, your client gives you the explicit instructions:  Do what the foreign counsel directs you to do.  Does UPL arise solely because the client provides you instructions via his designated foreign counsel?

 4 
 on: Yesterday at 05:47 pm 
Started by dab2d - Last post by dab2d
Okay.... I can see what you are saying.

So given how most of this works, (as an examiner you see horrible specs and claims because the Attny would tell you that the client/firm wanted that way) what are the things to look out for.

Like you said, Often times you do not even contact the client, but are relying (if they even relay) advice through a third party. Are you relying on them as the client's agent?
Basically, what is the best SOP to use when dealing with foreign clients?   

What is stopping a US entity from employing foreign firms if they are making informed decisions and they instruct you to follow the directions of the Foreign Firm.
 

 

 5 
 on: Yesterday at 04:42 pm 
Started by EDCGadgetGeek - Last post by mersenne
Gotta watch out for public disclosure & statutory bars, too.  How did your guy find out about the invention?  If they're not related (e.g. under NDA) then presumably some information about it is public.  Is that enough for a public disclosure?  Was the disclosure first made more than a year ago?

 6 
 on: Yesterday at 04:23 pm 
Started by phiken - Last post by phiken
I did not get many pre-AIA questions. I did not focus on pre-AIA 102 while studying but was familiar enough with it to look things up if needed.

 7 
 on: Yesterday at 03:10 pm 
Started by EDCGadgetGeek - Last post by lazyexaminer
Combination of both amending & arguing.  The 101 and 112 are straightforward, but there is nothing checked off that some claims are no longer being considered because the rejection has been withdrawn.  I thought the Examiner had to explicitly include some kind of language saying an amendment overcame a rejection, or the like. 

The current MPEP examiner guidelines provide the following...
707.07(e)   Note All Outstanding Requirements [R-08.2012]
In taking up an amended application for action the examiner should note in every letter all the requirements outstanding against the application. Every point in the prior action of an examiner which is still applicable must be repeated or referred to, to prevent the implied waiver of the requirement.

Well if we assume the examiner is following that MPEP section then the rejections are withdrawn, because they were not noted, repeated or referred to, so they are not a requirement outstanding nor a point in the prior action which is still applicable. 707.07(f) is also applicable, as they should have addressed your arguments more than just "not persuasive."

So yeah, the examiner should definitely have explained what was up with those rejections. Whether it is required enough that you could petition for it, or demand it as Robert says, I don't know. An interview might be helpful in this case, or at least a clarifying phone call (ask straight up: the arguments are not persuasive but the rejections were withdrawn anyway, right?).

I can certainly see the situation where the examiner might say "Your arguments are not persuasive and my 103 rejections are still good. However, because of your amendment I am presenting a new ground of rejection, which is even better than my old rejection, so I'm just going to drop that old rejection and use this new one instead." I see nothing wrong with that assuming the new rejection is in fact necessitated by amendment. Of course this should be clearly explained in the action.

But yeah, to answer your original post again, I think the rejections are withdrawn and you just have to deal with the new ones, I do not see how they can be of record if removed from the latest action...you might say that is your assumption in the next response.

 8 
 on: Yesterday at 03:03 pm 
Started by EDCGadgetGeek - Last post by Robert K S
It is common for rejections to be withdrawn without any explicit acknowledgement of such in an Office action, but in this instance, where the rejections disappear despite an explicit notice that arguments were "not persuasive", it is worth demanding written clarification from the PTO.  It might be worth phoning the examiner (and, if that doesn't work, the listed supervisor) to request an amended Office action or some kind of written supplement to the record clarifying the status of the previous rejections.

 9 
 on: Yesterday at 02:49 pm 
Started by EDCGadgetGeek - Last post by EDCGadgetGeek
Combination of both amending & arguing.  The 101 and 112 are straightforward, but there is nothing X-ed/marked on the Office Action Summary that some claims are no longer being considered because the rejection has been withdrawn, nor does the Examiner mention it...I guess I can just ass-u-me those prior rejections were withdrawn?  I thought the Examiner had to explicitly include some kind of language saying an amendment overcame a rejection, or the like. 

The current MPEP examiner guidelines provide the following...
707.07(e)   Note All Outstanding Requirements [R-08.2012]
In taking up an amended application for action the examiner should note in every letter all the requirements outstanding against the application. Every point in the prior action of an examiner which is still applicable must be repeated or referred to, to prevent the implied waiver of the requirement.

 10 
 on: Yesterday at 02:29 pm 
Started by EDCGadgetGeek - Last post by lazyexaminer
I just received a final OA, and the Examiner said my arguments in the earlier amendment/response were NOT persuasive, yet he did not repeat the rejections in the final OA (for 112, 101 & 103).  He only discussed a new grounds of rejection under 103. 

What is the significance of the Examiner telling me my arguments are not persuasive while at the same time not repeating those rejections?  I was under the impression the Examiner would have to repeat those rejections, and then add any new grounds for discovered prior art, etc... 

Do those earlier rejections still stand or are they withdrawn (by default) considering he made a new grounds of rejection under 103?

I would say if a rejection is not present in the latest action it is no longer of record, i.e. it is withdrawn. For example, if you appealed right now I can't imagine that the Board would consider these rejections that were not in the final. You appeal "from the decision of the primary examiner" and there is no decision making these old rejections in the final.

How is finality justified? Did you amend? Is it apparent that the amendment does in fact overcome the rejections, and maybe it was just a typo?

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