Strategies to Minimize Prosecution Time and Increase Patent Term – Part 1

© 2007 Michael Kondoudis,
www.patentablydefined.com

This is the first of a two part series on maximizing patent value by minimizing prosecution time before the U.S. Patent Office.

Introduction

Under U.S. Patent Laws, a patent is enforceable from the date the application issues up to 20 years after the application was filed. It is during this so-called “patent term” that the majority of the reward for an applicant’s investment in prosecuting the application is realized. The most direct way to maximize this patent term is to minimize the prosecution time of the application to achieve the earliest possible issue date. This series will discuss several strategies to consider.

Draft the Application to Appeal to Examiner’s Discretion

An often overlooked factor in patent prosecution is that examiners have some discretion as to the order in which they choose to “pick up” and examine applications from their docket. Examiners are supposed to take up applications in a specified hierarchy specified by Section 708 of the Manual of Patent Examining Procedure (MPEP), which generally specifies that applications are to be examined in the order of their effective filing dates. The PTO, however, ensures compliance with this requirement by monitoring whether the oldest application on each docket is acted upon every other week (known as a by-week). As a result, after an examiner acts on the oldest case on his/her docket, that examiner has some discretion to “cherry pick” applications from their docket thereafter.

Sometimes Examiners Need to Find an Easy Application to Examine

Examiners are under ever increasing production pressures and sometimes they need an easier to examine application to boost their production. For example, consider that an examiner is responsible for ensuring that the application satisfies the Patent Laws and Rules, understanding the claimed invention and conducting a thorough search of the art, and allowing only patentable subject matter. Also, examiners are required to meet certain production quotas measured every by-week. Thus, when an examiner needs to make up ground to meet his/her production quota at the end of a by-week, they tend to look for applications from their docket that will require easier-to-generate first Office Actions, so that they can increase their production. There is, therefore, an opportunity to obtain earlier examination of an application by drafting the application in a manner that makes the application “attractive” to an examiner, when the examiner needs a quick production boost.

How to Draft an “Attractive” Application

What exactly makes an application “attractive” to an examiner is impossible to answer with specificity because, as the saying goes, “beauty is in the eye of the beholder.” As a general rule, however, easier to examine applications tend to be more attractive to examiners. And, easier to examine applications share a common trait; they are drafted with the examiner’s job in mind. So, these applications are written in clear, concise, and understandable language with easy to understand figures that correspond to the written description, are well-labeled, and illustrate every claim feature. These applications tend to require an art search of a relatively reasonable scope by keeping the number of claims to a minimum, especially the number of independent claims. Also, these applications use reasonable claim language that accurately and specifically identifies the claimed invention while avoiding lengthy preambles. Sometimes, these applications even describe, at the beginning or the end of the detailed description portion of the written description, some of the subject matter an applicant believes is patentable. All of these traits tend to make an examiner’s job easier by: (1) minimizing the time an examiner must spend to understand the invention to be examined; (2) minimizing and focusing the scope of the search for prior art; and (3) minimizing the need to identify objectional informalities (e.g., inconsistencies between the written description and the drawings, claim features not shown in the drawings).

Rescinding Disclaimer Occurring During Prosecution of Parent Application(s)

© 2007 Christopher Paul Mitchell (Chris)

The CAFC’s decision in Hakim v. Cannon Avent Group, PLC, et al., No. 05-1398 (Fed. Cir. 2007) surprised some practitioners. Hakim had sued asserting infringement of its patents, including U.S. Patent No. 6,321,931 (the ‘931 patent). The lower court granted the defendants’ summary judgment motions, including a motion that the ‘931 patent was not infringed. The lower court reasoned that an amendment in a parent application to the ‘931 patent also was relevant in construing the claims of the ‘931 patent and thus narrowly construed the limitation in question.

On appeal, Hakim argued that “that by re-filing the application with broader claims, he avoided any unnecessary restriction that may have crept into the prior prosecution.” Slip op. at 5. The CAFC did not agree. The decision noted that

[a]lthough a disclaimer made during prosecution [of a parent application] can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.

Slip op. at 7.

In light of this decision, I will consider taking the practical approach of including the following form paragraph in the application papers when filing continuation applications:

This application is a continuation of prior pending U.S. Patent Application Ser. No. XXXXXXX, filed XXXXXXX, which is herein incorporated by reference in its entirety. Any disclaimer that may have occurred during the prosecution of the above-referenced application(s) is hereby expressly rescinded, and reconsideration of all relevant art is respectfully requested.

A Practical Blog is Born

© 2007 Christopher Paul Mitchell (Chris)

Welcome to The IPIP (Incredibly Practical Intellectual Property) Blog, a source for practical suggestions for better protecting intellectual property. My goal is to enable attorneys and IP professionals to provide practical suggestions and best practices to other attorneys and IP professionals.

I envision posts authored by attorneys and IP professionals that are actually engaged in the day-to-day representation of clients (such as law firm associates and solo practitioners). Each post will ideally focus on a particular tip or best practice. Each post will hopefully include a legal and/or commercial rationale for the particular tip or best practice. These tips or best practices will then be available for all to read and consider.

I hope you will consider authoring a post. If you are interested in contributing to The IPIP Blog as a named author, please visit www.mitchellip.com and contact me.