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Friday May 28, 2010

Five Tips For Practitioners

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos


A few weeks ago, IPLaw 360 published an article titled, “Five Things Patent Examiners Wish You Would Do.”  The article—aimed at patent practitioners—featured sound suggestions on things attorneys could do to help the examination process advance successfully.  SPEs David Ometz, John Cottingham and Andrew Koenig, who were interviewed for the article, were spot on in their suggestions for examiners and attorneys to find common ground and work together so deserving applicants can get their patents and their innovations to market. 


Here are their five tips:


1.      Set up an interview

As I’ve said in this blog and in other fora, I’m a big believer in the power of interviews.  When people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real time.


David Ometz put it perfectly: “An interview may not always result in the allowance of a case, but it can advance the prosecution, especially if it stalls out,” he said. “An examiner gets to hear firsthand from the attorney or applicant what the crux of the invention is, and that can help an examiner visualize the invention better in his head.”


Or, as John Cottingham said, “Communication allows for a better understanding on both sides and gets cases to move quickly.”


2.      Lay Out Arguments From the Get-Go

Attorneys should be precise in their arguments, pointing out in a concise manner just how the invention is novel and how it is different from prior art. And they should do this at the outset, rather than waiting until after one or more office actions, or on appeal.


In the article, Andrew Koenig said, “I've seen multiple times during prosecution that it is not until the appeal brief that attorneys give me all of their arguments. But if they had showed me those earlier, we might have had a different result.”

Getting precise information about the invention to the examiner early in the process can help advance prosecution and avoid unnecessary back and forth between the examiner and the applicant.

3.      Avoid Filing Excessive Claims

Excessive claims in a patent application can unnecessarily prolong prosecution.


David Ometz rightly pointed out: “Often the claims seem to be repetitive and they are trying to get at the same inventive concept. If an application goes above 30 or 40 claims, an attorney should consider what is in there that may be extra and what each claim is adding to the patent application.”


This is clearly a scenario where more isn’t necessarily better.  In fact, it's frequently worse.  Applicants should consider whether claims beyond 30 or so are really necessary.  In most cases, they probably are not.


4.      Put It in English, Please

Often applications from foreign filers are poorly translated into English, which can frustrate examiners and unnecessarily delay prosecution.


When an application is poorly translated and not in plain English, David Ometz noted: “It can be hard to understand what the invention is, and it could take an office action or two to sort through the claims to get at what they really mean.”


5.      Come Prepared

This sounds simple enough, but sometimes attorneys come to an interview without the information or knowledge needed to have a productive discussion.  Sometimes they seem not to know the case or are unable to articulate the inventive concept.


Andrew Koenig further explained that attorneys who are organized and well-prepared can help move the examination process forward and give examiners the information they need to do their jobs most effectively.  He added: “At the end of the day, it's about helping the applicant and the examiner get on the same page.”


Of course, we all know that patent quality, and timely completion of the examinaton process, is a two way street -- a shared responsibility between the USPTO and patent applicants.  We have lots of challenges on the USPTO side, and we're all working hard to overcome them.  By the same token, these five tips are great best practices to help applicants do their part.  The tips are all great, and I’m sure there are others you as applicants can share.  It would be great to assemble at least five more, so that we can put out a "Top 10" list.  What suggestions would you offer to other practitioners to help their chances of getting a patent?





It's interesting to see the recommendation that all possible arguments be included, since many commentators on patent prosecution and appellate practice recommend presenting the best arguments and culling those which are marginal. Many patent attorneys do include all possible arguments on each point, not being sure which will impress the examiner and/or board, but there is a risk that an examiner may not read al the contents of a lengthy amendment or brief fully or carefully. If all arguments are presented, one can at least emphasize the most important in an interview.

Posted by James K. Poole on June 01, 2010 at 04:10 PM EDT #

Would you like to hear my five tips for Examiners? :-) Actually, they are largely parallel: review the application to understand the invention, do a good first search and write a good office action, etc.

Posted by Jennifer Bales on June 02, 2010 at 08:22 AM EDT #

My three requests from examiners -- 1. Examine the claims. Consider every word. In many art units, examiners snip the claims apart into phrases, and match up the phrases to a reference, but ignore the interconnections. In computers and business methods (my two areas), almost all components are old, its the interconnections that are new, and if the examiner ignores those, the whole prosecution bogs down. 2. Answer ALL material traversed. There is no such thing as a "non-issue item" -- if the applicant raised it, it was raised for a reason, and by law, the examiner has to address the issue. Over 80% of my extended-prosecution cases fall into this pattern: in reply to a first Action, I raise at least one issue that should result in allowance (usually an omitted claim limitation -- see item 1!), and the examiner's second action simply ignores the issue. (I think the underlying cause here is final rejection -- the examiner knows that if he/she addresses the issue I raised, then the second action can't be final -- therefore there's an incentive to selectively ignore!) 3. We all have to be able to rely on the words on the printed page to know the law -- when you need to know the law, look it up, don't make it up. A few examples: (a) 37 CFR 1.104(d)(2) says that after an applicant "calls for" an affidavit or substantial evidence, the examiner must come forward with something more than personal opinion in reply. End of story, according to the text -- now try getting an examiner to follow this in practice. (b) Presidential directive, Supreme Court, and Foreword to the MPEP all note that the MPEP gives instructions that examiners are "required" to follow, but is not "law" against applicants. Ask an examiner to follow the MPEP - again, a near-certain way to create friction, not progress. (c) Once Congress, the Supreme Court and Federal Circuit have given us definitions of terms like "moot," "new ground of rejection," "procedural," "appealable," obligations under Paperwork Reduction Act, and the like, that controls. Too often, a lawyer that reads the relevant law and asks an examiner or the Petitions Office to simply follow it creates friction, not resolution. PTO employees are very fond of phrases like "it cannot be seen" to explain why the written law will not be followed.

Posted by David Boundy on June 07, 2010 at 10:07 AM EDT #

I've tried several times to submit thoughtful and complete comments in response to Director's blog articles, but the system kicks out any comments over some very small limit - 1000 characters or something like that. If the PTO intends this to be a genuine give-and-take of thoughtful discourse, the PTO should remove the limit, and let comments go through with formatting so they can be read - paragraphs, etc. The stated reason - to block spam - is transparently false. Look at comment 2 to the Ombudsman article. (The totality of the facts prompts one to ask, does the PTO intend this blog as genuine dialog, or is this yet another solicitation of comments that the PTO has no intention of reading?) David Boundy

Posted by David Boundy on June 15, 2010 at 08:13 AM EDT #

Since applications filed as bad English translations are clearly a problem for everyone, why not encourage examiners to reject them and require them to be refiled in better English (along with a redline copy showning all changes to insure no new matter)? 35 USC 112 requires a specification in "full, clear, concise and exact terms." Such rejections should also quickly discourage such practices.

Posted by Paul F. Morgan on June 19, 2010 at 08:24 AM EDT #

It may also help if the examiners were better trained in the legal requirements for obviousness. To make just one example, KSR requires a person skilled in the art to have a reason to combine references, not that a claim be found obvious only because the claim elements can be individually found in the prior art among a myriad of competing elements - no matter how improbable the proposed combination may be and that no reason can be discerned to pick one element over another. Yet, some examiners doe not seem to appreciate this or many other aspects of patent law and interviews do not seem to help a lot when an examiner's mind is set.

Posted by Franco Serafini on June 25, 2010 at 01:35 PM EDT #

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