This presentation was delivered by Aishwarya Narayan as part of a course for senior management and IP Officers in the Automobile Industry. It introduces the concept of patent prosecution and covers the full range of activities involved in prosecuting a patent application through to grant.
The presentation covers:
- Concept of Patent prosecution
- Activities until grant of application-search, drafting, filing, amendment, responses etc
- Patent prosecution process
- Requirements for grant of a patent
- Machine or Transformation test
- Bilski v. Kappos
- Concept of Novelty
- Concept of Non-obviousness
- Specification support
- Requirements for prosecuting a patent application
- Office Actions (OA)
- Types of Objections
- Types of Rejections
- Restriction Requirement
- Responses to OAs
- Strategy and guidelines
- Prosecution Mindset
The presentation introduces the term “prosecution” and covers the various stages in patent prosecution. It addresses all patentability requirements — subject matter eligibility, novelty, non-obviousness, industrial applicability and specification support — and elaborates on the practices used to overcome rejections related to each requirement. Case law is used to demonstrate the importance of the requirements and the changing law in this area. The presentation encompasses the practical aspects and best practices of post-patent-filing activities.
The presentation also covers ways to overcome rejections cited in office actions and the strategies that may be employed during the patent prosecution stage.
Giving an overview of various patent practices around the world, it concludes with the prosecution mindset required to approach the various types of rejections from a patent office.
The presentation
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.