Section 102 Defines What Constitutes Prior Art Under Section 103

Avoiding Department 102 and 103 Rejections:

Sections 102 and 103 of the U.S. Patent Act, which govern the novelty and obviousness of proposed inventions, are the two most frequent grounds on which new patent applications are rejected by USPTO examiners.

Preparing a patent application to comply with both Section 102 and 103 is both a creative, organic practise and a matter of careful, data-driven training. Here are four approaches that will help increase your patent application'south chances of success.

Search for prior art by classifications in addition to descriptive searches.

The most basic searches for prior art typically involve searching for elements of the name or description of an before invention. While this type of search is useful, it also presents several potential pitfalls. Valid prior fine art may not use expected words or phrases in its descriptions. For example, prior art for a claimed invention of a new screwdriver might non use the word "screwdriver," but could instead include the clarification of "a handheld device for loosening and tightening threaded fasteners."

Another use for descriptive searches is to place the classifications and sub-classifications that are most probable to include prior art for the proposed invention. Patent researchers tin can then focus on searching those specific classes and subclasses.

Depending upon the nature of the invention, freely available patent search tools may not offer the required depth and flexibility to fully support these more complex and in-depth types of searches.

Include international patents in a prior art search.

In that location are well over 100 patent authorities around the world, and the rapid adoption of the Cooperative Patent Nomenclature arrangement (CPC) is making it much easier for these agencies to coordinate their administrative efforts. Prior fine art from, say, Taiwan is more probable to serve every bit a ground for invalidating your patent today than information technology would take in 1995.

Brand sure you are conducting a prior art search that incorporates the patent data of equally many international patent authorities as possible.

Be aware of comparable patents and distinguish your application.

If an exhaustive prior art search has failed to yield any results, a prudent next pace is to try to identify and become familiar with the claims of whatever patents that some other researcher might mistakenly cite as "prior fine art."

While it may be that no unmarried case of prior fine art fully encompasses a new invention's proposed claims, one or more prior inventions may take claims that resemble them enough to requite a patent examiner suspension. At best, that can prolong the application process and may result in a non-final rejection.

Endeavour to conceptualize the examination process by closely evaluating the proposed invention'due south claims anew confronting any patents that could be viewed as prior art, fifty-fifty if your earlier research process already has ruled them out. Prepare the application to distinguish itself from the earlier works in such a mode that a less skilled or experienced analysis can discern the uniqueness of the new invention's claims confronting those of the older, comparable inventions.

Be well versed in prior art.

How to avert an "obvious" invention is often anything only obvious, and defending an invention against the charge that it is obvious can be i of the about difficult aspects of patent drafting and prosecution.

Of Sections 102 and 103, Section 103 defines a would-be invention'southward obviousness by subjecting information technology to the scrutiny of a hypothetical "person having ordinary skill in the art to which [the invention's] subject matter pertains." Unfortunately, this merely shifts the subjectivity from the question of what is obvious to the question of what comprises "ordinary skill." Many patent disputes that wind up in civil litigation have turned on these bug.

That said, "obviousness" is another area where being deeply familiar with relevant prior works in all the related fine art units volition better position you for successful patent prosecution.

Fifty-fifty if no unmarried instance of prior art covers a proposed invention'south claims, the invention could still be subject field to charges of obviousness if an examiner can frame its claims equally merely a combination of claims from multiple prior art works.

Equally when attempting to distinguish an invention's claims from alleged prior art, defending against obviousness requires some imagination. Instead of anticipating private works of prior art to which the invention might be compared, the claiming here is to imagine how an examiner might perceive it as an "obvious" fusion of ii or more than patented or unpatentable claims.

richardsonheress1957.blogspot.com

Source: https://www.lexisnexisip.com/knowledge-center/prior-art-search-four-ways-to-avoid-section-102-103-rejections/

Share this post