Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 357
only in France and has no enforceability or effect in the U.S.
However, it is a good prior-art reference in the U.S.
Common Misconception: If an examiner cites an in-force
U.S. patent as a prior-art reference against your application,
this means that your invention, if manufactured, sold, or
used, would infringe this patent.
Fact: The only way you can tell if your invention would
infringe any patent is to compare the patent’s claims against
your invention. Most cited in-force patents would not be
infringed by your invention, since their claims are directed
to a different invention. Again, examiners hardly ever read
claims of patents they cite and the PTO is never concerned
with infringements.
Common Misconception: If an examiner cites a very old
prior-art reference against your application, it is not as good
a reference as an in-force patent or a very recent reference.
Fact: The age of a reference is totally irrelevant, so long as its
date is earlier than your filing date or your earliest provable
date of invention. (See Chapter 5.)
D. What to Do When You
Receive an Office Action
When you receive an OA, don’t panic or be intimidated
or take it personally. It’s common for some examiners to
reject all claims, even if the rejections are not valid. This
type of rejection is termed a “shotgun” or “shoot-from-thehip”
rejection. Although they shouldn’t do so, examiners
sometimes do this because of the pressure of work, and
sometimes to force you to state more clearly the essence of
your invention and its true distinguishing features. You’ll
find that even if your examiner rejects all of your claims, if
you approach your OA in a calm, rational, and methodical
manner, as outlined below, you shouldn’t have too much
difficulty in ultimately getting your patent if your invention
meets the legal tests for patentability.
If the PTO Suggests You Get an Attorney
Some examiners insert a form paragraph in an OA,
suggesting that you hire a patent attorney, regardless of
how well the application is prepared, if there is no attorney
of record. This has been done in several cases I prepared,
but where I did not appear as the attorney of record. You
can safely ignore this form paragraph, unless you feel
uncomfortable without an attorney.
1. Record Due Date on Your Calendar
and OA, and Mount OA in Your File
After you get your Office Action, write the date you received
the OA and the due date of your response right on it (as is
done in Fig. 13A/1), and also on your calendar so you don’t
forget it. You should actually write the date thrice on your
calendar: once on the date it’s actually due, once two weeks
before it’s due, and once one month before it’s due. If the due
date falls on a weekend or holiday, your due date is the next
business day. Also, mount the OA in your file (see Inventor’s
Commandment 19 in Chapter 10) so you won’t lose it.
2. Check the References and
Review Your Application
Your OA will usually cite prior-art references. Some will
be applied against your claims and some will be cited as
background as a matter of interest. In either case, the PTO
does not send copies of any cited U.S. patent and published
patent application references with OAs. They do send
copies of cited foreign patents and nonpatent references. If
you receive an OA which cites U.S. patent references, you
must obtain copies of the cited references yourself. You
have several ways to do this: (1) Download them one page
at a time for free or order entire patents for a fee from the
PTO’s website (see Chapter 6, Section M, for instructions),
(2) Download complete patents for free from one of the free
patent sites (see Chapter 6, Section M), (3) Obtain access to
the PTO’s Private PAIR (Patent Application Information
Retrieval) system and download complete U.S. patents
cited against your patent application. At present I don’t
see any significant advantage of getting copies via Private
PAIR over the private services, but it can also be used to
file patent applications electronically and view the status
of your applications. (Since it is somewhat inconvenient to
obtain references, you may wish to obtain paper copies of
only those that the PTO has actually applied against your
claims and merely review on the monitor those that were
cited as being of interest.)
To obtain access to Private PAIR, you must: (1) Obtain
a PKI (Public Key Infrastructure) Digital Certificate by
completing and mailing to the PTO a notarized application;
(2) Obtain a Customer Number by sending or faxing
an application to the PTO; (3) Associate your Customer
Number with your patent application(s) by completing an
Excel spreadsheet and mailing it on a CD to the PTO; (4)
Obtain and install the PTO’s electronic filing software on
your computer. (I strongly advise making a ghost backup
of your hard disk and learning how to restore the backup
before attempting to install any new software.) The full