Strategies To Minimize Prosecution Time And Increase Patent Term – Part 1

April 5, 2007

in Patent Drafting Strategies,Prosecution Strategy

This is the first of a two part series on maximizing patent value by minimizing prosecution time before the U.S. Patent Office.

Introduction

Under U.S. Patent Laws, a patent is enforceable from the date the application issues up to 20 years after the application was filed. It is during this so-called “patent term” that the majority of the reward for an applicant’s investment in prosecuting the application is realized. The most direct way to maximize this patent term is to minimize the prosecution time of the application to earn the earliest possible issue date. This series will discuss several strategies to consider to achieve this goal.

Draft the Application to Appeal to Examiner’s Discretion

An often overlooked factor in patent prosecution is that examiners have some discretion as to the order in which they choose to “pick up” and examine applications from their docket. Examiners are supposed to take up applications in a specified hierarchy specified by Section 708 of the Manual of Patent Examining Procedure (MPEP), which generally specifies that applications are to be examined in the order of their effective filing dates. The PTO, however, ensures compliance with this requirement by monitoring whether the oldest application on each docket is acted upon every other week (known as a by-week). As a result, after an examiner acts on the oldest case on his/her docket, that examiner has some discretion to “cherry pick” applications from their docket thereafter.

Sometimes Examiners Need to Find an Easy Application to Examine

Examiners are under ever increasing production pressures and sometimes they need an easier to examine application to boost their production. For example, consider that an examiner is responsible for ensuring that the application satisfies the Patent Laws and Rules, understanding the claimed invention and conducting a thorough search of the art, and allowing only patentable subject matter. Also, examiners are required to meet certain production quotas measured every by-week. Thus, when an examiner needs to make up ground to meet his/her production quota at the end of a by-week, they tend to look for applications from their docket that will require easier-to-generate first Office Actions, so that they can increase their production. There is, therefore, an opportunity to obtain earlier examination of an application by drafting the application in a manner that makes the application “attractive” to an examiner, when the examiner needs a quick production boost.

How to Draft an “Attractive” Application

What exactly makes an application “attractive” to an examiner is impossible to answer with specificity because, as the saying goes, “beauty is in the eye of the beholder.” As a general rule, however, easier to examine applications tend to be more attractive to examiners. And, easier to examine applications share a common trait; they are drafted with the examiner’s job in mind. So, these applications are written clearly and efficiently, and avoid unnecessarily complex sentence structures. Also, these applications include easy to understand figures that correspond well to the written description, are well-labeled, and illustrate every claim feature. These applications tend to require an art search of a relatively reasonable scope by keeping the number of claims to a minimum, especially the number of independent claims. Also, these applications use reasonable claim language that accurately and specifically identifies the claimed invention. Sometimes, these applications even describe, at the beginning or the end of the detailed description portion of the written description, some of the subject matter an applicant believes is patentable. All of these traits tend to make an examiner’s job easier by: (1) minimizing the time an examiner must spend to understand the invention to be examined; (2) minimizing and focusing the scope of the search for prior art; and (3) minimizing the need to identify objectional informalities (e.g., inconsistencies between the written description and the drawings, claim features not shown in the drawings).

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© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 2 comments… read them below or add one }

Patent Boy June 15, 2007 at 4:38 am

A description of the subject matter that applicant believes to be patentable could understandably be helpful to an examiner, but doesn’t this easily run the risk of characterizing the invention? It seems that if an application’s detailed description states that one’s of the technology’s important features is widget X, then a future litigator could argue that the claims only cover devices with widget X.

Any suggestions on avoiding this?

Anonymous Examiner October 14, 2008 at 3:42 am

Its a tough line. From a litigation standpoint it may seem like a bad idea to summarize the invention.

But, from a prosecution standpoint, there is a large disconnect between examiners and attorneys. If the legalese were removed, and attorneys weren’t so worried about their statements being used in litigation then maybe prosecution would be more effective.

It seems like Attorneys don’t try and explain the claimed invention or the prior art. Examiner’s need to understand what you are teaching. Which is exactly what is needed for a “Notice of Allowance”. An examiner needs to understand how you improved the prior art. but the attorney’s sometimes seem like they are just playing word games. Sometimes I don’t think the attorneys really even understand the technology they just make up words (that aren’t used in the art) and put them in the claims and say “Look, your prior art doesn’t teach because it doesn’t teach term X. Term X could be a word Attorney made up to mean a true computing term. But in reality Term X is not used in computing.

As an examiner, reading the background and summary give me a lot of info. The first thing I want to know is what category is this in. If applicant tells me the right category, he has more credibility. If he misleads me and purports to have invented the very concept that is categorized, and then I find out otherwise, the credibiility is weak. For example, an attorney may give a background that only explains a problem like people needing directions, and then describe the background/summary as if he invented GPS. When in reality, GPS is well known, and the invention is an improvement of GPS. The applicant/attorney would be better served by stating in the background. GPS was first developed in 19xx, The device has grown in popularity with use of Onstar, etc. It is Also known as Navigation System. The claimed invention is an improvement over other GPS devices because . . . .

Anyways, good luck. It is a tough position to decide which of the 600,000+ applications that come through are actually novel, unobvious improvements.

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