A 37 C.F.R. 1.111(b) is the legal step you must follow if the United States Patent and Trademark Office denies your patent.

What is 37 C.F.R. 1.111(b)?

There are many reasons why the patent office would deny a patent. Some reasons are the patent being filed under an incorrect patent, not paying the right amount when you filed the patent, and filing an invention that is not patentable. 37 C.F.R. 1.111(b) is asking for the denial of the patent to be reexamined for consideration.

Why You Might Need to File a 37 C.F.R. 1.111(b)

Filing a patent is often difficult, and errors can occur. Some mistakes a patent filer makes are oversights that a patent attorney is trained to catch, such as plagiarism, illegitimacy of patent claim, and gross similarity to current patents. It is common for patent filers to file incorrect patent types.

There are two distinct patent types: utility and design. Utility patents are for those inventions with identifiable benefits that are capable of use. An example of a valid utility patent would be a machine that 3-D printed artificial bones, if that patent did not already exist. Design patents, however, are about how an existing object, such as an embellished chair, is styled. There are numerous reasons a patent may be denied, and patent filers should understand the process before they file patents.

37 C.F.R. 1.111(b) and Office Actions

A person who files a 37 C.F.R. 1.111(b) must, according to the United States Patent and Trademark Office, “distinctly and specifically point out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action.” A prior office action is the decision the patent office made when denying the patent application. After the office rejects the application, it is necessary for the patent filer to prove that the patent meets the criteria for a patent and provide corroborating evidence for patent validity.

How to Contest an Office Action

To give an argument that the patent is legitimate, the patent filer must answer each argument against the patent's validity. The patent filer's reply must address every objection and rejection in the office action, pointing to and refuting the supposed errors. In any patent filer reply, there has to be specific distinctions, including newly presented claims, patentable against the rejections the office action cites.

Tips When Preparing for a 37 C.F.R. 1.111(b)

  • Gather your evidence. The information for your initial patent should be in a secure place. Always have duplicate copies that you can reference and give to your attorney. Documentation of your claim and expert witnesses can bolster your arguments against the patent rejection.
  • Answer each point of the patent challenge directly. Don't bring in additional issues that are irrelevant and can cloud your arguments. Using general allegations to defend your patent does not comply with patent requirements and is a waste of the office examiner's time, leading to possible rejection of your 37 C.F.R. 1.111(b) claim.
  • Don't use generic appeal templates to make your case to the examiner. Put in the effort to create a legal and legible document for the patent challenge.
  • Use plain language. Unfamiliar terminology will make it difficult for the patent examiner to understand your arguments and may lead to denial of your patent appeal. Have your attorney explain any terms that are unfamiliar to you and heed suggestions for simpler, understandable language. It is essential to use correct grammar and spelling when filing a patent appeal.
  • Keep your response brief. Filing large documents can invite errors that do not answer the challenges of the office action.
  • Hire a knowledgeable attorney to help you with your appeal of the patent decision. Appealing a patent without an attorney may lead to you missing vital information that can strengthen your arguments. Patent law can be complex, and a patent attorney has the skills to help you.

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