Comments on: Strategies To Minimize Prosecution Time And Increase Patent Term – Part 1 http://patentablydefined.com/2007/04/05/strategies-to-minimize-prosecution-time-and-increase-patent-term/ A practical patent prosecution blog published by Michael Kondoudis Mon, 23 Apr 2012 10:38:57 +0000 hourly 1 http://wordpress.org/?v=3.3.2 By: Anonymous Examiner http://patentablydefined.com/2007/04/05/strategies-to-minimize-prosecution-time-and-increase-patent-term/comment-page-1/#comment-4718 Anonymous Examiner Tue, 14 Oct 2008 03:42:26 +0000 http://patentablydefined.com/?p=4#comment-4718 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. 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.

]]> By: Patent Boy http://patentablydefined.com/2007/04/05/strategies-to-minimize-prosecution-time-and-increase-patent-term/comment-page-1/#comment-13 Patent Boy Fri, 15 Jun 2007 04:38:19 +0000 http://patentablydefined.com/?p=4#comment-13 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? 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?

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