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Common Mistakes in Patenting: Focusing on Current Product Design

 Many clients come to me with a drawing of their invention. Part of my job is asking them how they could change that drawing and still have the invention work.

The purpose of filing a patent application is not to define your product, it is to define all products that you want to exclude from the marketplace where your product is being sold.

The life of a patent is 20 years. If you can envision features that you would want to add in five, ten or even fifteen years, you should be describing them in the application you are preparing now. The same goes for alternative approaches that you are not certain are feasible.

 When a client comes back after three years and says they want to file a new application to cover additional product development and I can show them where the new development is described in the existing application it means we did a good job on that first application.


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Common Patenting Mistakes: Saying What Instead of Saying How

Many inventors focus on what their invention achieves that previously available alternatives were unable to achieve (i.e. more, better, faster cheaper). That is important in terms of marketing, but patents are about technology. When preparing your patent application, imagine you are writing an instruction manual for a do it yourself kit. Try to include all details that a person that has never done it before would need.

When you go to write a patent application, you need to think in terms of what physical components are in the device that make it capable of those achievements you want to market. If your patent is about an industrial process, think about what new steps you add to the process, or how you changed known steps.

Once you have identified the components or steps that contribute to the unique achievements or advantages of your invention, make sure they are well described in the text and depicted in the figures. You will not be able to add more details after filing the application. However, you will be able to import advantages described in the specification to the claims during examination if the need arises.

The mistake you want to avoid is leaving out important details.

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Common Patenting Mistakes: Filing Too Many Applications

Each time you file a patent application you are committing to a long series of future expenses. If you do not control the rate at which those future expenses accumulate, you will wind up in a “Homer Price and the Doughnut Machine” situation. Early stage start ups are typically cash poor. Delaying IP expenses till a future time when a revenue stream is expected makes good economic sense.

The law says that a patent shall be granted on only a single invention. However, the worst result of describing several related inventions in a single application is deferment of future expenses related to applications claiming the second and subsequent applications.

The best result of describing several related inventions in a single application is the ability to combine different features in order to get around a rejection based on prior art.  If you file the features in question in separate applications, you lose the ability to combine them in the future.

If you go to a meeting with a patent attorney to disclose an invention and they suggest filing two or more separate applications, you should ask “Why?”  The answer should include more than an explanation that “more applications look better”. Any serious due diligence will do more than count the number of applications in your portfolio. In addition, filing a single application with multiple inventions now may lead to multiple applications/patents in specific countries several years in the future.  It definitely saves money at the international (PCT) stage one year after your initial filing.

 

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Common Mistakes in Patenting: Paying the Wrong Price

People say, “You get what you pay for.”  The implication is that if you pay too little, you will get an inferior product or service.  Experience suggests you get less than you pay for in some cases. Who has not paid too much for a restaurant meal, a hotel room or an article of clothing?

The same considerations apply in preparation and filing of a patent application. The price by itself is not an indicator of quality. In other words, the cheapest is not necessarily the best and the most expensive is not necessarily the best.

As in any other purchase, look for obvious high overhead costs that can drive up the price. A large office in a posh building on a desirable street costs money. If you buy services from such an office, part of the price of service is paying for the office itself. The same is true of the number of employees. Every employee is paid. If you meet three secretaries and a receptionist on your first visit to an office, part of the price of service is paying for the support staff. Evaluate your financial circumstances to see if you feel comfortable spending part of your IP budget on the “prestige” of a large office.

On the other hand, if you get a price quote that seems very low, you should also be wary. Even if the quote is a flat fee, there is always an estimated number of work hours behind it. A professional that quotes you an unusually low price may be offering to do an unusually small amount of work.

Somewhere in the middle is a price that reflects a reasonable amount of work by a skilled professional working in an organization with modest overhead costs.

Identifying a skilled professional involves trusting your instincts to a certain degree. Did the person seem conversant with the technology at your initial meeting? Did they ask appropriate questions about what is new and what is standard? Did they take an interest in, and understand, your business model?  Did they raise the subject of future product development? Finally, is the person you met with the person that will actually be doing the work?

Using this approach, you can find a service provider that will translate most of the money you pay for their service into quality work product.

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Are patents going to become harder to get?

Many people presume that in the age of the global village patents are international. The fact that PCT applications are referred to as “international applications” contributes to this common misconception.

Those of us that represent patent Applicants are painfully aware of the fact that the procedure for obtaining a granted patent is a country by country proposition with all of the attendant fees, laws, regulations and bureaucracy.

Even the International (PCT) stage of examination can have different results depending on which International Search Authority (ISA) the Applicant selects for their PCT application.

Results differ because each ISA has a tendency to search for references in its own primary language.

For example, The United States Patent and Trademark Office (USPTO) looks primarily for English language references, most often US patents or published US applications. The European Patent Office (EPO) is nominally comfortable citing references in English, French, or German, which means they most often cite US or EPO references, with an occasional French patent or German patent or UK patent finding its way into their search results. The Chinese Intellectual Property Office (SIPO), Japanese Patent Office (JPO) and Korean Intellectual Property Office (KIPO) each tend to focus primarily on references in their own language (including PCT applications in the relevant language). The five patent offices together are referred to as the IP5.

The net result is that different ISAs within the IP5 cite different references because they are searching different databases.

Until recently, English was king in the world of patents. More recently, the Chinese government has made patenting a national priority. As a result, the number of applications filed in China each year is greater than any of the other IP5 offices.  According to WIPO (World Intellectual Property Organization) in 2016, the USPTO received 0.52 million new patent applications and the SIPO received 1.26 million new patent applications. In the same year, the JPO received 0.46 million new patent applications and the KIPO received 0.23 million new patent applications. EPO statistics indicate about 0.3 million patents were filed there in the same year.

This means in 2016 there were 0.8 million applications filed in western languages (USPTO + EPO) and 1.96 million applications filed in Asian languages (SIPO+JPO+KIPO). In other words, only about 30% of new applications are in western languages.

This means that the USPTO and EPO, by searching primarily, if not exclusively, in western language databases in their role as ISA are ignoring a significant proportion of relevant references when they examine a PCT application for patentability.

As a result, many western Applicants are surprised by Asian language references discovered for the first time during national stage examination in China and/or Korea and/or Japan. Conversely many Asian Applicants are surprised by western language references discovered for the first time during national stage examination in the USPTOand/or the EPO.

In order to address this issue the IP5 have instituted a pilot program called “IP5 PCT Collaborative Search & Examination” (abbreviated as CSE). According to this program, an Applicant selects one of the IP5 offices as a main ISA. The main ISA performs a search and prepares a draft  international search report (ISR) and written opinion (WO). The draft ISR/WO and a record of the search is  shared with the other four offices  in the IP5 (peer offices).

The peer offices review the draft ISR/WO, perform additional searching as deemed necessary, and provide comments back to the main ISA. The main ISA then prepares the final ISR/WO, taking into account the peer contributions.

The following process model provided by WIPO presents the procedure schematically:

Note that at this stage participation in the CSE program is purely voluntary and you need to file a request to be included.

However, if the CSE program becomes standard, PCT applications will routinely be exposed to more references, in more languages, at the international stage. That would almost certainly make patents harder to get in specific countries during the national stage.

Alternatively, routine exposure of PCT applications to more references, in more languages, at the international stage could lead to granting of narrower claims, which consider the prior art, in the national stage. These narrower claims would presumably fare better during opposition, inter partes review and infringement litigation.

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Is it better to work with a solo practitioner or a law firm?

A potential client asked me the other day if his company’s interests would be better served by working with a solo practitioner legal representative like me, or with a larger firm to prepare and file a patent application.  There are advantages and disadvantages to each. If you are considering filing a patent application, consider these factors before choosing a representative. Look for advantages that are relevant to you in the present, or near future. De-emphasize disadvantages that are likely to only be relevant in the distant future.

Solo practitioner advantages

The person you speak to during your first meeting is the person that you will be working with throughout preparation and filing of the application and responses to examination reports. If there are additional applications, the same person will be handling those, and will be able to place them in context relative to the earlier application(s).

You often get more value for money working with a solo practitioner than working with a larger firm. There are two reasons for this.

The main reason you get more value for money is that overhead costs for a solo practitioner are typically lower. The money you pay is going primarily for professional services, and not to support a large staff and extensive office space. Having worked in large offices I know that only 35% to 50% of money billed to a client for professional services goes to the person that did the professional work.  As a result, the professional in a large firm is under pressure to generate sufficient billings to pay their own salary. It was a big relief to set up my own practice and have the luxury of devoting two or three times more hours to each task. Note that the billing from the solo practitioner is not necessarily lower, but the quality of the work product is potentially much greater.

The subsidiary reason you get more value for money is that your application makes up a larger proportion of the total workload in a solo practice, than in a large office. That means each task “feels” more important to the person doing it. This subsidiary reason complements the main reason to virtually insure you get more value for money working with a solo practitioner than working with a larger firm.

Large firm advantages

Larger firms can offer a wider variety of services. For example, a large firm may have separate departments for preparing patent applications (and responding to examination reports), litigation, licensing and opinions. Depending on where your company is in terms of business development, you may not need help with licensing for many years. Most firms would like to avoid litigation altogether for as long as possible, and many succeed in doing so. Consider how many of the departments at a large firm you really need.

Large firm disadvantages

Many larger firms like to bill for even the smallest of tasks, It is easy for them to do this because a half to two thirds of the money you pay them goes to overhead cost that pay for a clerical staff among other things. A client once came to me with a case that had originated at Firm X. I asked why he was transferring from Firm X.  The reply: “I didn’t mind being billed 500$ for a paper clip, but I was never really sure that I got the paperclip.” Small charges like per charge pages for photocopying and FAX transmissions can add up over time.

Many larger firms require multiple rounds of review by different people. In theory this is an advantage. In practice, if you are billed by the hour for each review, it detracts from the value for money. This is especially true if an unreasonably large number of rounds of review are implemented.

Overhead costs for a large firm are a big concern.  If the receptionist that greets you, invites you to sit in a 5000$ leather sofa and offers you a choice of beverages that puts Starbucks to shame  has a 200$ hairstyle and a 60$ manicure, you should wonder how the money you spend in that office is being used.

Many larger firms will have a partner attend the initial meeting. Is that partner the person t5hat will actually be writing your application? Has that partner written any applications in the last year? Five years? Who will actually be doing your work? Are they at the initial meeting? How much experience do they have?

Solo practitioner disadvantages

 One person does it all. If they are not qualified, this is a disadvantage. Ask yourself what impression that person made on you at an initial meeting. Did they ask relevant questions? Did they take time to make sure you understand the patent process from an administrative and financial perspective? Did they ask about your business development plans, without regard to the proposed patent application. This disadvantage may be minor, or major. Think carefully and give it the appropriate weight when choosing a representative.

If you think a solo practitioner might be right for you lets talk about whether I might be the right choice. Contact me to set up an initial consultation without cost or obligation.

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Bullying as a Third Millennium Business Practice

In many contexts, bullying is an unacceptable practice. However, in business a legally defined type of bullying is not only accepted, but encouraged. We are talking about patents of course. In the United States, the right of an inventor to patent their invention is established in the constitution. Thomas Jefferson, who drafted the constitution, felt that patents were so important that he served as commissioner of patents from 1790 to 1793.

Grant of a patent by the government is a license to the inventor to “draw a line in the sand”. If someone steps over the line, the inventor can “smack” them with an infringement lawsuit. As with actual schoolyard bullying, not everyone that draws a line follows through with a smack.

Sometime in June of 2018 the US Patent and Trademark Office will issue patent number ten million.  The fact that patent number ten million is being granted is not that interesting. What is interesting is that the speed with which patents are being granted is accelerating. The table below shows that both the number of years for each successive million patents, and the doubling time for granted patents are decreasing.

By graphing this data (below) we can see that the number of years to add a million granted patents is at an all time low. The doubling time of just over 27 years is lower than at any time since 1935 (when doubling meant adding only one million patents).

So what do all these numbers mean? Some would argue that the increased rater of patent grant indicates “poor quality patents”.  With respect, I have to disagree. It is widely reported that 80 to 85% of business assets are intangible. As recently as 1975, only 15 to 20%  of business assets were intangible. Intangible assets includes, among other things, patents.

As the emphasis on intangible assets has increased, the emphasis on the importance of patents has increased along with it. That is, in large part, because the best way to scare a bully is by having the appearance of a bully. While few companies actually want the incredible expense and headache of an infringement lawsuit, many companies want to give the appearance of being ready for an infringement lawsuit. Having an extensive patent portfolio provides that appearance.

If a company is making a lot of money from their technology one of two things is likely to happen:

(1)          A competitor will appear in the marketplace with similar or identical technology. In this scenario patents on the technology held by the company serve as a sword. As in actual conflict, it is often sufficient to use the sword as a threat, without actually attacking the opponent.

(2)          A competitor will appear with patents on similar or identical technology. In this scenario patents held by the company on the technology serve as a shield. Patents held by the company on the technology can be used to threaten a countersuit. This is analogous to the cold war policy of “mutual assured destruction”.  If both sides stockpile patents, neither side can really risk a lawsuit.

The sword of (1) and the shield of (2) probably explain a significant part of the acceleration in patent grants illustrated in table 1.

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A Good Form of Reform

An earlier post dealt with the question “What form Reform?” We now have at least a partial answer to that question. A series of amendments to the Federal Rules of Civil Procedure took effect on December 1, 2015. A number of these changes will influence patent litigation.
The first, and perhaps most dramatic,change is that Rule 84 was eliminated. Rule 84 used to say “…the forms in the appendix suffice under
pleadings1these rule
s.“ Under Rule 84, completion of Form 18 was  sufficient for filing of an infringement suit.Elimination of Rule 84 leaves rule 8(a)(2) in control. Rule 8(a)(2) requires that a complaint must contain a “short and plain statement of the claim showing that the pleader is entitled to relief.”The Supreme Court has interpreted rule 8(a)(2) in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). Neither of these cases is a patent infringement case.In Iqbal the Court summarized the requirements of sufficiency of pleadings that it had set forth earlier in Twombly (emphases added):

Two working principles underlie our decision in Twombly. First, the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions. … Second, only a complaint that states a plausible claim for relief survives a motion to dismiss. Determining whether a complaint states a plausible claim for relief will, as the Court of Appeals observed, be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense. In keeping with these principles a court considering a motion to dismiss can choose to begin by identifying pleadings that, because they are no more than conclusions, are not entitled to the assumption of truth. While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations. When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief. Our decision in Twombly illustrates the two-pronged approach.

 

In the context of patent litigation the old Rule 84 created a dichotomy between “judicial experience” and “common sense”. Elimination of Rule 84 opens the door to common sense, amd the Supreme court has defined this term to some extent by requiring “factual allegations” which must be “well pleaded”.  It is not yet clear how high the bar will be for a claim to survive a motion to dismiss, but it will undoubtedly be higher than the bar set by the old form 18.

 

Raising the bar for filing a patent infringement complaint may do more to curb dubious patent suits than all of the proposed “patent reform” bills that congress has been considering over the last few years would have done if they had all been voted into law. This is a welcome change because it will be applied to all players in the game, whether they are practicing entities or not.The second change is that procedures will move faster. The new versions of rules 4(m), 16, and 26(f) mean that due dates for various pre-trial events will be 30 to 60 days earlier. This may work to the advantage of patentees because they can get their materials ready in advance, before filing the complaint. Accused infringers will have less time to get organized to respond. discovery 2

 

 

The third change deals with the scope of discovery. Rule 26(b)(1) now limits discovery to material which  “is relevant to any party’s claim or defense and proportional to the needs of the case” (amended text in italics). Under old rule 26(b)(2) proportionality limitations only applied if there was a court order to that effect. Now they are the default.

 

The proportionality analysis considers: 

  1. a) the importance of the issues at stake; 
  2. b) the amount in controversy; 
  3. c) the parties’ relative access to relevant information; 
  4. d) the parties’ resources; 
  5. e) the importance of the discovery in resolving the issues; and 
  6. f) whether the burden or expense of the proposed discovery outweighs its likely benefit.

 

The new version of Rule 26(c)(1)(B) provides that “the allocation of expenses” can be included in a protective order. This means that the court can allocate the cost of discovery, or portions of the discovery, to one of the parties in the suit.

 

The net effect of these changes to the discovery rules may be more modest discovery requests and/or more judicial limitation of sweeping discovery requests.

 

In summary, the new rules seem to offer significant protection against abuse of the system by wealthy players enforcing patents with vague claims against large numbers of alleged infringers. It remains to be seen whether these measures will dampen the public outcry to “fix” the patent system.

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Oh Lord Let Me Drive My Mercedes Benz

Janis Joplin is famous for asking the Lord to buy her a Mercedes Benz. Presumably she would have wanted to drive the car even if she were intoxicated or otherwise impaired.

The Court of Appeals of the Federal Circuit recently decided   (in Vehicle Intelligence v. Mercedes-Benz December 28, 2015) that some claims directed to a “method to screen an equipment operator for impairment” are patent ineligible under §101 as being directed towards an abstract idea.

However, the CAFC did not invalidate slightly narrower claims in the same patent which are directed towards a “method to screen an equipment operator for intoxication” because those claims were not at issue. The difference is moot for Janis but those of us that still want to drive, and understand how §101 is being viewed by the courts have a lot to learn from this case.

Vehicle Intelligence and Safety had sued Mercedes Benz USA for infringement of US 7,394,392 in the Northern District of Illinois. The district court ruled claims 8, 9 and 11-18 patent ineligible under §101 as being directed towards an abstract idea.The CAFC affirmed that decision indicating that the “…disputed claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity…”

The ‘392 patent contains two independent method claims, 1 and 8. They are reproduced side by side here with each step in boldface and differentiating language underlined:

 

1. A method to screen an equipment operator for intoxication, comprising:

screening an equipment operator by one or more expert systems to measure at least one type of chemical in the air in proximity to the equipment operator to detect potential intoxication;

selectively testing said equipment operator when said screening indicates potential intoxication of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said intoxication of said equipment operator.

8. A method to screen an equipment operator for impairment, comprising:

screening an equipment operator by one or more expert systems to detect potential impairment of said equipment operator;

selectively testing said equipment operator when said screening of said equipment operator detects potential impairment of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.  

Each of claims 1 and 8 recites three steps: screening, selectively testing and controlling operation. The preamble of claim 1 is narrow (screen… for intoxication) while the preamble of claim 8 is broader (screen…for impairment).

The screening step of claim 1 is likewise narrower (measurechemical in the air in proximity to the equipment operator to detect potential intoxication) relative to the corresponding step in claim 8 (detect potential impairment).

 

This difference in scope is repeated in the selectively testing step (claim 1 potential intoxication vs claim 8 potential impairment) and again in the controlling operation step (claim 1 indicates said intoxication vs claim 8 indicates said impairment).

 

Up to this point the draftsman of the claims has limited claim 1 to the species “intoxication” while directing claim 8 towards the entire genus of “impairment”.

 

In order to limit the scope of claim 8, that claim recites a limitation on the screening which is not parallel to claim 1:  wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.  

 

Claim 1 meets the requirements of §101 while claim 8 does not. Since the issue is abstract ideas as evaluated by the Mayo/Alice test we can infer that claim 1 is significantly more than the abstract idea of “…testing operators of any kind of moving equipment for any kind of physical or mental impairment” because (a) it recites a specific impairment type (intoxication) and/or (b) it recites a specific screening method (measurechemical in the air in proximity to the equipment operator). Inference is required because claim 1 was not reviewed on appeal.

In contrast, the Court equated the broad scope of claim 8 with abstraction:  “None of the claims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the “expert system” to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results.”

Claim 11 (dependent from claim 8) is interesting in this regard because it recites a Markush Group list of physiologic parameters of the operator. However, the claim preamble indicates “…further comprising measuring…” so that the physiologic parameters are assigned neither to the screening nor to the testing of base claim 8. Under those circumstances the court did not find this claim instructive as to how to perform either screening or testing for any impairment even though one of the parameters in the Markush Group is chemical in proximity to the equipment operator which is similar to claim 1.

There are at least four lessons to be learned from this case:

The first lesson is that broad claim scope may be interpreted as abstraction.

The second lesson is that the Court reviewed the specification before rendering a decision on whether the claims contained “significantly more” than the abstract idea. This implies the degree of abstractness (or definiteness) of claim language is related to corresponding explanatory passages in the specification.

The third lesson is that the Court took a dim view of the patentee’s attempts to link the claim language to a particular machine:

“Vehicle Intelligence’s argument harkens back to our preAlice machine-or-transformation test in arguing that the claimed methods are tied to particular machines and that alone is sufficient to confer eligibility. But, postMayo/Alice, this is no longer sufficient to render a claim patent-eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Merely stating that the methods at issue are performed on already existing vehicle equipment, without more, does not save the disputed claims from abstraction.”

The fourth lesson is that the Court views its own earlier decision in DDR holdings as being narrowly applicable to computer networks:“The claims at issue are not “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” as in DDR Holdings. 773 F.3d at 1257. The claims do not address a problem arising in the realm of computer networks—they are broadly drafted to cover testing a vehicle operator for impairments, similar to a police officer field testing a driver for sobriety.”

Although this decision is marked non-precedential it is worth considering when drafting a set of claims.

 

 

 

 

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What Should My Patent Agent Do?

President John F. Kennedy said: “…ask not what your country can do for you, ask what you canListen Respond

do for your country.” Both the inventor meets and the patent agent should us that as a motto

from the first time they meet.

From their first meeting, the inventor and agent share a common goal: getting a patent granted on

the invention. The inventor is the undisputed expert in the technology behind the invention. The

agent has experience in the legal requirements for getting a patent granted. Together, the inventor

and agent go through a four stage process. The stages are disclosure of the invention, preparation

of a patent application, filing of the application and examination of the application.

Typically, the inventor has much less experience in the “examination” than the agent. The

agent’s experience in examination of cases relating to other inventions means they can offer

guidance to the inventor during disclosure of the invention and preparation of the patent

application. Here is a brief description of how the inventor and agent can interact during the for

stages.

Disclosure of the Invention

Since the inventor is the undisputed expert in the technology behind the invention, this is the

stage where the inventor is most active. The agent’s role at this stage is to guide the inventor in

providing relevant material in an appropriate format and with sufficient detail. During this stage

the inventor and agent should discuss topics such as how the invention differs from previous

solutions to a similar problem, which portions of the invention are new and which portions

merely employ existing technology to perform its traditional function, and how the invention fits

into a business plan. It is important that the inventor disclose the invention to the agent before

making any public disclosure (e.g. presentation at a conference or trade show; publication of an

article; advertisement; Internet site or solicitation of a production contract from an outside

source)

The inventor can save time and money by coming to an initial consultation prepared to discuss

these issues and with drawings and/or text to accompany their verbal explanation. At the end of

this stage agent and inventor should both understand what portions of the invention are essential,

and which features are optional.

Preparation of a Patent Application

During this stage, the agent is more active but the inventor still plays an active role. Together the

agent and inventor agree on a set of patent claims which define the scope of protection desired.

The agent should explain the role of independent claims and dependent claims so the inventor

can offer meaningful input at this stage. It is often appropriate to organize the claims in sets, with

each set directed to a different aspect of the invention.

Once the claims are agreed upon, the agent can proceed to write a complete application. During

writing, additional questions may occur to the agent. The inventor should do their best to answer

these questions in as much detail as possible.

The agent provides a complete draft of the application to the inventor for review. The inventor

should thoroughly review the entire application and make comments. It is the inventor’s job to

make sure that all relevant details are presented in a way that will be understood by someone that

reads the application. Any concerns the inventor has should be addressed by the agent.

Once the inventor and agent agree that the application is accurate and complete, the application

is ready for filing.

Filing of the Application

This stage is purely administrative and is done by the agent. Prior to filing the inventor and agent

should discuss whether the application is to be a provisional patent application (PPA) or a

regular utility application. Once that decision has been made, the agent will provide any

necessary forms for inventor signature. Filing is typically done online and a filing confirmation

can be provided the same day.

Examination of the Application

This is often the most frustrating stage for the inventor for two reasons.

The first reason for frustration is that it takes a long time. The average time for receipt of a first

Office Action (Examination Export) in the United States is about 17 months. If you file your

application as a PPA add 12 months to that figure. Depending on how many rounds of

examination there are, the total time to grant can be much longer.

The second reason for frustration is that it patent Examiners typically reject all claims in the first

Office Action. The inventor needs to be prepared for this. The fact that all claims are initially

rejected does not necessarily mean that no patent will be granted.

Once the Office Action is received the inventor has the opportunity to provide a written

response. The written response should point out reasons why the grounds for rejection are

incorrect.

There are two categories of reasons why the grounds for rejection may be incorrect.

The first category of reasons why the grounds for rejection may be incorrect is technical reasons.

Technical reasons are based upon an incorrect interpretation of cited references by the Examiner.

The agent will try to identify as many technical reasons as they can, but the inventor has an

important role to play here in identifying technical reasons and/or criticizing technical reasons

proposed by the agent.

The second category of reasons why the grounds for rejection may be incorrect is legal reasons.

The agent takes primary responsibility for formulating legal reasons but the inventor will have

valuable input here. Many legal arguments rest upon what a hypothetical “person of ordinary

skill in the art” (POSITA) would or would not think or understand based upon the teachings of

the application under examination or based upon the teachings of reference(s) cited by the

Examiner. The inventor is often in a better position to evaluate what a POSITA might think than

the agent.

Once the agent and inventor have discussed the rejections in the Office Action and any relevant

legal and/or technical arguments they are in a position to formulate a response strategy. The

response strategy may include amendments to the language of the claims so long as the

amendments are supported by the application as filed. Before filing claim amendments it is

important that the inventor discuss the impact of the proposed amendments on the business plan.

Once an amendment strategy has been agreed upon, the agent prepares a draft response for

approval by the inventor. As with the application, the inventor should review this response to

make sure that it is complete and accurate.

In many cases, follow up of the written response with a telephone interview can be productive. If

your agent does not suggest a telephone interview, you may want to ask about the possibility of

an interview.

If an interview is scheduled, preparation of a list of talking points can be helpful. Interviews are

typically limited to 30 minutes and it is rare to get more than one interview per office action. A

list of talking points can help the agent present arguments in a logical and convincing order.

Even though the arguments are all present in the written response, discussion can help make the

Examiner more receptive.

Summary

View your patent agent as partner in pursuing a common goal. Let their expertise complement

your own and cooperate fully with requests to provide information or review documents.

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