Intellectual Property FAQ’s
After an application for a patent has been filed by the applicant with the patent office, the patent office allocates the application to a patent examiner for examining the patent application. Initially, the patent examiner examines the patent application for its compliance with the formal requirements. Thereafter, the examiner further determines as to whether the claims made by the applicant in his/her invention falls under patentable subject matter as set forth in the Patent Act of that particular country where the Applicant has filed for a patent. nnFurther, a determination is made as to whether the alleged invention has been in the public domain before such filing of the application. In determining as to whether the alleged invention is worthy of a patent and whether the alleged invention is in fact in the public domain or not, there is an exchange of information between the patent examiner and the applicant. Such exchange of information is referred to as prosecution.n
During the prosecution of the patent application the examiner, more often than not, rejects the claims based on prior arts. In response to such a rejection, applicant may rebut/traverse the examiner’s rejection by setting forth certain arguments providing reasons as to why the claimed invention is patentable over the prior art and why the rejection should be withdrawn. Further, the applicant, in addition to the arguments, may make amendments to the claims in order to better define the claimed invention. nnThe above process of rejection of claims by the examiner and a response to the rejection by the applicant in the form of amendments and arguments continues until the invention in the patent application is considered to be patent worthy by the patent office and a patent is granted. The afore-mentioned process of exchange of such information which is material for determining the patentability of the alleged invention creates a prosecution history for that application. n
The information obtained from the prosecution history of a patent application acts as an extremely important factor for determining the scope of claims. It has been observed over the past few years, by the patent community across the world, that if claim amendment is made to overcome the examiner’s rejections and the amendment is in the form of deleting certain features, the applicant is precluded from obtaining rights to those features or equivalents of each of those features at a later stage.