Interview with Patent Examiner by Video Conference

Your Patent: Office Actions and Examiner Interviews

Office Actions

The Patent Offices of the various jurisdictions around the world issue Office Actions. These actions indicate many things, including the status of the Patent Application. An Office Action reflects the current opinion of one or more Patent Examiners regarding a Patent Application.

Types of Office Actions for Pending Applications

  • Filing Receipt
  • Notices of Abandonment
  • Notices of Allowance
  • Notices of Publication
  • Notice to Correct Application Papers
  • Patent Cooperation Treaty Information
  • Payment of Additional Governmental Fees
  • Substantive Examination by Examiners

What is a Substantive Examination by the USPTO?

A USPTO Substantive Examination Office Action generated by an Examiner’s can include:

  • Under 35 U.S.C. 101, the Examiner concludes if the Application is directed to patentable subject matter
  • Under 35 U.S.C. 102, the Examiner opines if one or more of the claims of the Application are novel
  • Under 35 U.S.C. 103, the Examiner can argue if one or more of the claims of the Application are obvious in view of the prior art
  • Among other things, under 35 U.S.C. 112, the Examiner determines if the Specification enables one in the art to practice the invention and whether the claims particularly point out and distinctly claim the subject matter the Applicant regards as the invention

Applicant Interviews with the Examiner

The USPTO allows Applicants (or their representatives) to conference with Examiners. These conferences can simplify 35 U.S.C. 101-103 and 35 U.S.C. 112 matters propounded by the Examiner and streamline the Applicant’s prosecution and the Examiner’s examination of the Patent Application. Over the years, it is Business Patent Law’s experience that verbal communication between the Examiner and Applicant’s attorney can assist both sides in better understanding the opposing side’s arguments.

Types of Applicant Interviews

There are three primary types of applicant interviews with the examiner for these pending office actions:

  • In-person
  • Telephone conference
  • Video conference

Some USPTO Examiners require the Applicant to use the USPTO Automated Interview Request system to schedule an interview.

Have Questions About Office Actions?

If you need legal assistance in responding to the USPTO Office Action for your Patent Application, please contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

In the meantime, if you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Racing to the Patent Line - Priority Date Filing USTPO

What is a Priority Date for Patents?

The priority date, under US law, is the filing date of the first Patent Application (Provisional or Nonprovisional) to which a Nonprovisional Patent Application claims benefit. Depending on the facts of each case, the claim of priority must be established prior to the expiration of the Provisional Application, abandonment of the Nonprovisional Application, or the grant of the Patent.

Why is a Patent’s Priority Date a Big Deal?

Among other things, the USPTO can only use references that were available prior to the priority date to reject the claims of the Nonprovisional Patent Application.  In other words, the USPTO cannot use inventions filed after this priority date to reject the claims of a Nonprovisional Patent Application. So if a competitor invents something while you are waiting for the Patent Office’s review, the earlier the filing date or priority date, the less prior art the Examiner can use to reject your Patent Application.

This matters because it may be two, four, or more years after you file your Nonprovisional Application before the USPTO starts detailed examination of your application.

What If I Made Earlier Filings?

A Nonprovisional Patent Application can claim the benefit of an earlier Provisional Application or a previously filed Nonprovisional Application. If a Nonprovisional Patent Application doesn’t claim the benefit of a Provisional Application or priority based on a previously filed Nonprovisional Application, the priority date is the filing date on the original Nonprovisional Patent Application.

What the US Code Says

35 United States Code (U.S.C.) 120

35 U.S.C. 120, in part reads, “An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application…”

35 U.S.C. 119(e)

35 U.S.C. 120(e), in part reads, “(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application…”

Examples: How Priority Date for Patent Applications Works

  • Our Provisional Application was filed July 4, 2020 and on January 15, 2021 our company files a Nonprovisional claiming the benefit of our Provisional Application. The priority date is July 4, 2020.
  • Our company filed a Nonprovisional Application on March 15, 2020. We opt to file a PCT Application. The priority date is March 15, 2020.
  • The Provisional Application was filed on September 15, 2019. Our company filed a Nonprovisional Application on September 12, 2020 claiming the benefit of the Provisional Application. Our engineers invented an improvement to the invention that was disclosed in the Nonprovisional Application but not in the Provisional Application. We opted to file a Continuation Nonprovisional Application. The priority dates are September 12, 2020 for the improvement and September 15, 2019 for the remainder of the invention disclosed in the Provisional Application.
  • Our company filed a Provisional Application directed to a mousetrap on January 12, 2017. On January 9, 2018, we filed a PCT Application directed to the mousetrap. In March 21, 2019, our engineers invented a device for use with the mousetrap. The device is used for sampling the DNA of the mouse restrained in the mousetrap. On May 15, 2019, the company files a US Continuation-in-Part Application claiming both the mousetrap and the device for sampling DNA. The priority dates are January 12, 2017 for the mousetrap and May 15, 2019 for the device for sampling DNA.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need legal assistance in preparing Patent Applications, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

covid19 response

COVID19 Office Response

Our offices remain open and serving clients. We have only made a few changes to the way we do business. We are able to work with you by phone and email, as always, but are not meeting in person at this time. This is to protect our clients and staff. It will not impact the quality or timeliness of your service and we intend to keep your matters on track and on time.

Since our practice is primarily of national and international scope, changes in operations in the various state court systems will not likely impede most matters managed by us.

Federal Courts and the United States Patent and Trademark Office (USPTO) made some changes to standard operating practices. For example, USPTO offices are closed to the public and some petition fees may be waived and extensions of certain patent and trademark deadlines may be possible. In-person oral hearings and meetings with USPTO employees are not possible at his time.  However, for years, Business Patent Law has used digital technologies to communicate with the USPTO, other federal agencies and our foreign clients and associates.

If you want to know how this impacts your intellectual property and business concerns, please contact us and we can discuss it.