Patents for Chemicals, Pharmaceuticals, and Biotechnology: Fundamentals of Global Law, Practice, and Strategy

By Philip W. Grubb | Go to book overview

19
PROSECUTION OF THE
PATENT APPLICATION TO GRANT

the whole unfortunate situation might have been avoided if Albert Einstein had not 'doodled out' his equation E = mc2 in the Swiss Patent Office around 1905 instead of getting on with the work he was being paid to do.

A. P. Pedrick, British Patent Specification 1,426,698

Lack of Unity 313
EPO Procedure 314
PCT Applications 315
The EPO as ISA--Protest Procedure 316
National Patent Offices 317
Lack of Novelty 317
Search Report 317
PCT Chapter II 318
EPO and National Procedure 318
Restriction of Scope 320
Lack of Inventive Step 321
Showings in the USA 322
Problem and Solution in the EPO 325
Interviews with the Examiner 326

The procedure for examination and prosecution of patent applications has already been described in general terms in Chapters 5 and 6. In this chapter we shall consider some of the problems which may arise when objections of lack of unity, lack of novelty, or obviousness are raised against a patent application, either in the international phase of the PCT, or before the EPO or national patent offices. We shall assume that formal objections to the wording of the specification and claims have been overcome.


Lack of Unity

Objections of lack of unity are more of a nuisance than a real threat. It is always clear that one can avoid the problem by filing one or more divisional applications, but in most cases this brings the applicant no advantage and simply costs him a good deal more money, since not only must a new set of application and examination fees be paid, but eventually two or more

-313-

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