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ExtremelyBullishZig

04/27/17 6:21 PM

#103256 RE: Biostockclub #103254

I have finally found the section from the USPTO that confirms what we have been saying in easy to understand language.

"1302.14   Reasons for Allowance [R-07.2015]

37 CFR 1.104  Nature of examination.

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(e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication."

https://www.uspto.gov/web/offices/pac/mpep/s1302.html

Basically...there are claims that are good enough for allowance. Due to the number of back and forth/removed and added claims...the examiner clarifies by documenting which claims are good. They become the reasons for the allowance.

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ExtremelyBullishZig

04/27/17 8:13 PM

#103264 RE: Biostockclub #103254

This is a must read if people want to see the timeline once we received the official notice of allowance...what things need to be carefully checked to protect us in case of litigation, etc.

Errors in the application and examiners remarks need to be checked and corrected now...if fees are paid and the patent is issued...if something is unclear or incorrect, they can have a tough time in court, which is why the reasons for allowance and interview summary are important as BioStocks mentioned.

This is an interesting paragraph to note:
"Deferring Issue: While infrequently implemented, it is possible to petition to defer issue of a patent
for a short period of time—such as a month or two—after the issue fee has been paid.
This might be necessary if licensing negotiations are on going, or in the case where the application has not yet published and the client is not ready to reveal their invention to the world or a foreign filing needs to be made. This may be made by filing a Petition to Defer Issue along with the petition fee. See M.P.E.P. 1306.01 for further information on this process."

https://www.google.com/url?sa=t&source=web&rct=j&url=http://www.aipla.org/Test%2520Document%2520Library/2010/pppt/Hansen_Paper.pdf&ved=0ahUKEwiw-e_F7MXTAhXIwiYKHZAPASEQFggcMAA&usg=AFQjCNHezxnorMoAK64sD5GvAfoLTEy7pw&sig2=YEq1uMRd7nxvRgjPaplYCA