Oblon Spivak Blog

Third party submissions in the past have not been frequently used in the U.S. or elsewhere.  In Europe, reports are that less than 1% of applications have had observations filed.  Despite the low use, reports from Europe do indicate that over 50% of examiners made use of the observations in prosecution, with over 14% finding that the observations resulted in a major reduction in scope or refusal. 

Recently, changes in U.S. law (discussed below) are intended to encourage...

In Ex Parte Ransquin, the Board reversed the Examiner’s obviousness rejection noting that the Examiner’s “continued reference” in his Answer to what the prior art discloses, evidenced “a fundamental misunderstanding by the Examiner of the difference between what references teach or disclose and what a proposed combination of references would have suggested to a person of ordinary skill in the art.” Ex Parte Ransquin, No. 2010-012450 (B.P.A.I. June 25, 2012). Since the...