This presentation was delivered by Aishwarya Narayan as a part of the course for senior management and IP Officers in the Automobile Industry. 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 on Patent Prosecution introduces you to the term ‘prosecution’ and covers the various stages in patent prosecution. It covers all patentability requirements, namely subject matter eligibility, novelty, non-obviousness, industrial applicability and specification support/ correctness, elaborating on the practices to overcome rejections related to the requirements. Further,the presentation uses case laws to demonstrate the importance of the requirements and the changing laws. It encompasses the practical aspects and best practices of post patent filing activities.
The presentation also covers ways to overcome rejections cited in the office actions and the strategies that may be used during the patent prosecution stage.
Giving an overview of various patent practices around the world, it concludes with the prosecution mindset, much needed to approach the various types of rejections from a patent office.