Director's Blog: the latest from USPTO leadership

I wanted to follow up on one of my blog postings from a few months ago about ways applicants and examiners can streamline the patent prosecution process.  The blog posting contained a “Top 5” list that appeared in IPLaw 360 in an article entitled “Five Things Patent Examiners Wished You Would Do.”   The article was based on an interview with three Supervisory Patent Examiners (SPEs): David Ometz, John Cottingham and Andrew Koenig. 

At the end of my posting I invited comments from our examining corps about expanding this “Top 5” list to a “Top 10” list of tips for improving patent prosecution.  There were dozens of comments and suggestions offered, and we have consolidated these comments into a “Top 10” list that I want to share with you.  Obviously, some of the items that appeared in the “Top 5” list are included in the new list, but thanks to many fine comments, the original “Top 5” have been refined and 5 more have been added.  Here is the list: 

1) CONDUCT INTERVIEWS:  Set up interviews when possible. Interviews can help applicants and examiners quickly identify points of agreement as well as points of disagreement.  An interview will help advance prosecution and provide an opportunity to facilitate a possible early allowance. 

2) KEEP CLAIMS MANAGEABLE:  Avoid filing excessive numbers of claims. Filing a manageable number of claims will enable the examiner to enhance prosecution by directing examination efforts at the heart of applicants’ invention. 

3) PROVIDE GOOD TRANSLATIONS:  Do a careful job of translating foreign-language applications into English before filing an application in the United States.  Poorly translated applications often result in undesirable lengthy prosecution resulting from lack of clarity arising from indefinite claim language or unclear wording in the specification. 

4) CLEARLY IDENTIFY NEW LIMITATIONS:  When adding new limitations to claims during prosecution, include a brief section in the remarks citing the location in the specification or drawings that provides support. This will eliminate unwarranted new matter rejections under Section 112 and assist the examiner in better understanding the meaning of the claims.  

5) FILE THOROUGH RESPONSES:  Take care to ensure that your response addresses the specific issues set forth in the examiner’s office action. Responses or amendments that fail to address the issues in the office action unduly extend prosecution. 

6) ADVANCE AMENDMENTS/ARGUMENTS EARLY:  File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible.  Amendments submitted after final are more difficult to deal with procedurally, are not automatically entered, and extend prosecution. 

7) COORDINATE US/FOREIGN APPLICATIONS:  Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application.  Success of the Patent Prosecution Highway (PPH) shows that applications drafted or amended in response to search reports and patentability opinions in corresponding foreign or international applications have a much higher allowance rate and shorter prosecution.  

8)  DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention.  If the claim set is not initially drafted to capture the protection needed or desired by the applicant, the examiner will have difficulty doing a comprehensive search on first action.  Furthermore, the examiner will have difficulty anticipating what might be claimed in the future, if the initial claim set is misdirected or overly broad. All of this extends prosecution at everyone's expense.    

9)  KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL:  Submit a focused Information Disclosure Statement (IDS).  Include in an IDS only those references material to patentability.  The citation of references that are not material to patentability does not promote a focused examination.  Also, be careful to avoid the repeated citation of the same reference. 

10)  DRAFT CLAIM SET FROM BROAD TO NARROW:  Draft your claim set beginning with the broadest scope to which you feel you are entitled and concluding with the narrowest scope you feel merits protection.  A claim set that is graduated in scope from broad to narrow assists the examiner in performing a complete and focused search on first action and can help the examiner anticipate future amendments.  A claim set that is merely broad does not assist the examiner in performing a focused search and often leaves the examiner guessing as to what might be claimed after first action.  This can lead to piecemeal prosecution and the citation of new art after amendment. 

Applicants and examiners both must be committed to compact prosecution in order to achieve the efficiency we all seek.  The tips above can assist practitioners and examiners in achieving an early resolution of rights in patent applications and ultimately expedite the issuance of a patent. 

Thanks to all who submitted comments which led to the creation of this “Top 10” list.  As always, I welcome your comments.