Topics

1

Patent Questions and Advice / USPTO first non final rejection response

« on: April 12, 2016, 09:21:12 PM »

What is the next step after received the USPTO first non final rejection.
The reviewer didn't do proper job because referenced methods he mentions are different and non comparable with ours.
1. Is the USPTO obligated to re-review the patent claims?
2. What are my chances at least one of my claims to be properly reviewed and accepted?
3. What is the USPTO common practice?

Thanks for your comments.

2

Patent Questions and Advice / Patent and Non-Patent Citations

« on: August 23, 2015, 08:39:43 AM »

I see in some patents there are Patent Citations and Non-Patent Citations at the end of the Patent text.

Question: Who provides those?

There is no field in the forms for Citations. Are the citations added by the reviewer or do we need to provide them?

Thanks,
Stan

3

Patent Questions and Advice / Reference to Provisional in the Non-Provisional

« on: August 23, 2015, 08:31:52 AM »

Do I need to include a reference to my Provisional filing in the Non-Provisional application specification?

Thanks,
Stan

4

Patent Questions and Advice / Oath or Declaration for Non-Provisional

« on: August 20, 2015, 04:05:05 AM »

It reads: "Either form PTO/AIA/01 or PTO/AIA/08 may be used to make the required declaration in a utility application. It is preferred that applicants use form PTO/AIA/01, which must be filed together with an application data sheet."
and then:
"An oath must be sworn to by the inventor before a notary public. A declaration may be submitted in lieu of an oath. A declaration does not need to be notarized. "

Question: Which Form does NOT require be sworn to by the inventor before a notary public?

Thanks,
Stan

5

Patent Questions and Advice / Can we change a drawing (graphic diagram) in Nonprovisional application

« on: August 16, 2015, 08:49:28 AM »

We have only one diagram drawing in the provisional filing describing a process. During implementation we simplified the process to omit one step (item).

My question is: Can we adjust the diagram accordingly for the Non-provisional application?

Thanks

6

Patent Questions and Advice / Can we change the names Blacklist & Whitelist in Non-provisional?

« on: August 13, 2015, 01:43:08 PM »

In our Provisional filing we used names Blacklist and Whitelist.
At the time of first app release it turned out that Apple does NOT allow the word Blacklist to be used at all so we changed these two names to Silentlist and Allowlist in the app released.

My Question is: Do I have to change these names in all texts and diagrams/drawings for the non-provisional application to match the names in the live app? or should I stick to names as filed in the provisional...

Thanks

7

Patent Questions and Advice / Nonprovisional Utility Patent Application

« on: August 12, 2015, 08:58:21 PM »

We have provisional filing about to expire and preparing Nonprovisional application.

The question is:
Is it expected the texts in sections Background, Description  and Summary to be identical with (copy & paste) texts from the Provisional filing?

Thanks