Register | Login
Intellectual Property Today
RFC Express - Document Management System

Amend or Argue Part II1






By Ronald Slusky

Ronald Slusky mentored dozens of attorneys in “old school” invention analysis and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New York City. This article is adapted from his 2007 book “Invention Analysis and Claiming: A Patent Lawyer’s Guide.” Ron’s two–day seminar based on the book will be given this month in Dallas and next month in Washington, D.C.. Ron also offers the seminar on-premises to law firms and in-house patent departments. See www.sluskyseminars.com Ron can be reached at 212-246-4546 and rdslusky@verizon.net.

The accompanying flow diagram presents a systematic approach for determining what’s to be done when a claim is rejected under §102 or §103. There are five options (boxes 12, 14, 16, 18 and 20) when addressing the rejection on the merits, with the choice of option being made based on the answers to four questions (boxes 11, 13, 15 and 17). Another option is to cancel the claim irrespective of the rejection’s merits (box 10).

Last month’s column looked at the options associated with first and second questions (boxes 11 and 13). This month’s column looks at the opti...

To view the complete article you must be logged in
Login Now

Not A Member Yet? Sign Up For A Free 10 Day Trial Account!


  © Copyright 2014 Intellectual Property Today
Download Adobe Reader for free