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The Real Cost Cutting Strategies for Patent Prosecution in Today’s Market

By: Sheetal S. Patel

Businesses with the intent to manage the bottom line are scouring the patent prosecution process for ways to cut costs. Some companies are capping the amount of money lawyers can spend to prosecute their patent applications, while others have abandoned patent applications altogether.

Capping spending is one cost-cutting strategy that is penny wise and pound foolish. For example, when corporations cap the amount of money – and therefore time – spent on the prosecution of patent applications, the quality of the patent application could be potentially reduced. When significant budget restrictions affect the patent application’s quality, the patent application pendency could potentially be much longer than expected. And as pendency of the patent application continues to increase, the cost of prosecuting the patent application will increase. In other words, the short term savings increase the long term cost of prosecuting a patent application.

Businesses would be better served returning to patent prosecution basics. Taking time (and spending money) to draft the patent application is a smart move businesses can make. Yes, it costs less to speed through the drafting of the patent application, but any savings are outweighed by issues that can crop up later. For example, a hastily drafted patent application might leave an Examiner confused when it comes to examining the application. The Examiner may not clearly understand and appreciate the scope of the invention. When the scope of the invention is unclear to the Examiner, many objections or rejections could be raised that will frustrate the Applicant and delay the allowance of the application. In addition, because of the significant number of objections or rejections, the Applicant will be required to spend more time and money to have an attorney prepare arguments to overcome these issues.

However, these issues can be easily avoided if businesses spend their money wisely, i.e., spend the time needed to properly draft the patent application. If businesses are willing to allow their attorney to invest more time on the preparation of the patent application, the attorney will be able to draft a better and more coherent patent application, which will clearly convey to the Examiner what the invention is directed to. As a result, there will be a reduction in the amount of objections and rejections during the prosecution of the patent application. This will also please the Examiner because the Examiner has to work less on nonsubstantive issues rather than substantive issues. And, as always, a pleased Examiner is more likely to grant an allowance of the patent application.

The bottom line is that a more complete patent application will reduce the pendency (and cost) for the prosecution of the patent application, which ultimately makes the businesses successful.

Another move for businesses is to take advantage of the Manual of Patent Examining Procedure (MPEP). The MPEP includes a set of guidelines for Examiners to use when examining patent applications. For example, the MPEP requires that an Examiner issue Office Actions that are complete as to all matters. If this requirement is not met, businesses should request that the Examiner issue another Office Action that is complete. A complete Office Action provides a clear record and gives the attorney prosecuting the case a better opportunity to rebut the rejections made in the Office Action. However, the only way to determine whether the Office Action is complete is for businesses to provide their attorneys with ample time to examine the completeness of the Office Action.

This leads to another technique that businesses can use to reduce prosecution costs in the long term. Businesses should spend more time to prepare a thorough Response that addresses each and every rejection in the Office Action. Businesses currently appear to be under the misconception that there is no difference between a Response that was prepared in two hours or six hours. But the time to prepare a Response depends upon the issues (i.e., objections and rejections) raised in the Office Action. If the issues are simple, the Response can be prepared rather quickly. However, more complex issues will require more time to prepare the Response because a thorough analysis is required to properly address the issues. This will inevitably reduce the length of prosecution, which automatically cuts the cost in prosecuting the application over the long term. However, when prepared hastily, the Response will not overcome the rejection and the length of prosecution will increase, thereby creating more expense for the business in the long run. Thus, a more complete response will likely overcome objections and rejections, and reduce the cost of prosecution over the pendency of the application.

In some instances, when a case is not progressing, Applicants typically take steps as varied as further amending the claims, abandoning the patent application or appealing the case to the USPTO’s Board of Patent Appeals and Interference (BPAI). But these measures usually mean more expense in the long run through the filing of unnecessary Responses or appeals without benefit of a better understanding of the Examiner’s position. Therefore, another smart move businesses can make is to conduct Examiner Interviews. In an Examiner Interview, the Applicant (and/or the Applicant’s attorney) has an opportunity to discuss the patent application with the Examiner. In such an interview, the Applicant will be able to explain the invention and scope of the claims, and provide arguments supporting the patentability of the claims in view of the prior art. The Applicant will be able to have a dynamic discussion with the Examiner and better understand the Examiner’s interpretation of the scope of the claims in view of the cited art. Furthermore, the Applicant will be able to strategize more effectively on how to obtain allowance of the patent application more promptly.

The Examiner Interview provides a means to effectively advance prosecution and better formulate a strategy to follow during the prosecution of the application. For instance, the Examiner Interview can be helpful even in instances when, based on the Examiner’s position, the Applicant concludes that it is no longer feasible to advance the prosecution of the pending patent application in front of the current Examiner. When this happens, the Applicant can then file an appeal to the BPAI via an Appeal Brief. This step means the Applicant avoids spending time and money filing an unnecessary Response to the Office Action that more than likely will not advance prosecution, given the Examiners’ previously stated positions. In those instances, the Applicant has now spent less time and money in prosecuting the patent application than they otherwise would have had they continued to unsuccessfully argue with the Examiner.

Simple measures, such as more complete patent application, determining whether Office Action is complete, filing thorough Responses and conducting Examiner Interviews can have profound impact on a company’s bottom line by reducing the time, and the number of prosecution iterations, spent obtaining a patent.