Office Actions

Please join us tonight as Patent Attorney Robert Crownover provides an overview of Office Actions. The discussion will cover:

- Types of Rejections,

- Options an Applicant has, and

- Methods for addressing Office Actions.

 

Agenda:

7:00 introductions and collection of topics.

7:15 Presentation.

8:15 Q&A and networking.

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  • Ronald Z.

    Thanks Robert for spending time finding the answer. Very helpful!

    July 18, 2013

  • Robert C.

    Hi all, Last meetup Ronald posed a question: "when filing a continuation, is it necessary to cite references the examiner cited against the parent application in an IDS?"

    The answer is no. Please see MPEP[masked] which states:

    "When filing a continuing application that claims benefit under 35 U.S.C. 120 to a parent application (other than an international application that designated the U.S.), it will not be necessary for the applicant to submit an information disclosure statement in the continuing application that lists the prior art cited by the examiner in the parent application unless the applicant desires the information to be printed on the patent issuing from the continuing application (for continued prosecution applications filed under 37 CFR 1.53(d), see subsection A.1. below). The examiner of the continuing application will consider information which has been considered by the Office in the parent application."

    July 18, 2013

  • Ronald Z.

    Thanks Robert for the presentation, and the Q&A session. And thanks Jonah for organizing it. Appreciate it!

    July 16, 2013

  • Jonah P.

    Nice presentation by Rob on office actions, followed by discussion of various topics

    July 16, 2013

  • Hari K.

    I am confused, discussion does not match the schedule ...

    July 9, 2013

    • Jonah P.

      Hi Hari,

      July 10, 2013

    • Jonah P.

      Hi Hari, Rob has an in-depth tutorial to give so we decided to postpone my case study until next month.

      July 10, 2013

  • Owen B.

    Jonah,
    Is this going to cover a specific issued patent as a discussion topic?
    If so, let us know which one it is so we can review it ahead of time.

    Thanks.

    Owen

    June 17, 2013

    • Jonah P.

      I haven't decided which case yet, but I'm thinking of application: 11482175. In the 2.5 years that I have been working on my company's patent portfolio I haven't yet taken one all the way from idea to issuance.

      June 17, 2013

    • Jonah P.

      I would probably use that application to explain the prosecution history, use different case to show how I wrote an application, and perhaps use a third case just to give an example of a patent that we had issued with a pre-issuance continuation.

      June 17, 2013

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