A Strategy To Speed Up The Prosecution Of Older Cases

October 22, 2012

in Practice Suggestions,Prosecution Strategy,The MPEP,Useful Information

The USPTO’s Manual of Patent Examining Procedure (MPEP) includes many interesting but somewhat obscure provisions.  One of the more useful examples of these provisions is § 707.02.  Section 707.02 of the MPEP essentially imparts “special” status to older cases and cases in which a third Office action has been issued.  Special status gives an application priority on an Examiner’s docket.  This section also brings the supervisory patent examiner into the examination process.

Section 707.02 of the MPEP

Section 707.02 of the MPEP, entitled Applications Up for Third Action and 5-Year Applications, states:

The supervisory patent examiners should impress their assistants with the fact that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.

The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.

Any application that has been pending five years should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered “special” by the examiner.

In recent years, the USPTO appears to be taking the guidance of MPEP § 707.02 more seriously – going so far as to specifically suggest in Examiner training materials some ways that Examiners might help their SPEs in these situations. For example, in its “Best Practices In Compact Prosecution Awareness Workshop” available here, the USPTO suggests that Examiners:

(1) inform their SPE when preparing  a third or subsequent action on the merits;

(2) make every effort to resolve/simplfy issues for appeal; and

(3) use telephone interview practice.

Example of How to Use § 707.02 of the MPEP

The following is an example of how one may use § 707.02 of the MPEP in a written response.

Formal Request to the Supervisory Patent Examiner Pursuant to MPEP § 707.02  

Applicants are presently responding to a third Office action on the merits.  Section 707.02 of the MPEP directs that the Examiner’s supervisor personally check on the pendency of this application, with a view to finally concluding its prosecution. Accordingly, Applicants formally request the personal attention of the supervisory patent examiner in this application and, in particular, the consideration of this response in light of the errors in logic and claim interpretation discussed herein.

A Few Additional Points

1.      The rationale behind MPEP § 707.02 can perhaps be found in MPEP § 706, which instructs that “[t]he goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity.

2.     Under the principles of compact prosecution, the examiner should review each claim for compliance with every statutory requirement for patentability in the initial review of the application and identify all of the applicable grounds of rejection in the first Office action to avoid unnecessary delays in the prosecution of the application. See 37 CFR 1.104(a)(1) (“On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application . . . with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.”)

3.     I discussed the Office’s policy of compact prosecution in an earlier post after this link.

© 2012, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney


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