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?