Get More Patent Bang for Your Buck
By: Sheetal S. Patel
Due to the severe recession, many businesses have been forced to limit resources spent on prosecuting patent applications, or to abandon
applications altogether. However, before taking such drastic measures, it would be wise to carefully evaluate your patent prosecution strategy. Strategies such as more
involvement by the inventor in the patent prosecution process, conducting Examiner Interviews and conducting an evaluation of the intellectual property to be patented
may help in reducing the total time and money spent on prosecuting applications.
In some circumstances, during the preparation and the prosecution of patent applications, the attorney may have to go through several communication layers before
receiving comments from an inventor. Often, in-house counsel acts as a liaison, or bridge, between the inventor and the attorney. The in-house counsel will discuss
the invention with the attorney, consult with the inventor and then relay the inventor’s response to the attorney. However, enabling the attorney to directly
communicate with the inventor may avoid possible miscommunication and unnecessary delays. Allowing the attorney to have access to the inventor may allow the attorney
to prepare the application more quickly and more accurately. Generally speaking, when an inventor is more engaged in the preparation of the patent application, the
accuracy in the substance of the application is increased, which tends to reduce substantive and non-substantive rejections alike.
Allowing the inventor to discuss the concepts of the invention with the attorney during the prosecution stage may also bring the patent application to allowance more
quickly. For example, when an Office Action is received from the USPTO, many practitioners agree that enabling the inventor, the attorney, and/or the corporate counsel
to sit down and discuss the office action is helpful. By collaboratively discussing the Office Action, the attorney can develop an effective strategy to move the
application closer to allowance. For example, during these discussions, the inventor could provide the attorney with important information about the cited art used to
reject the application, as well as provide insight into differences between the cited art and the claimed invention.
Not only is it important to enable communications between the attorney and the inventor, but it is also important to effectively plan on how to respond to each Office
Action. For example, conducting interviews with the Examiner after receiving the first Office Action or the second Office Action in a case may be beneficial. Often,
the interview alone will reduce the time to prosecute the patent application, and sometimes lead directly to an allowance. During the interview with the inventor, the
attorney can provide the Examiner with a general overview of the invention. Such an overview provides the Examiner with an idea as to what the invention actually is,
as well as the differences between the invention and the cited art used against the patent application. The interview also allows the attorney to have a dynamic
discussion with the Examiner and to better understand the Examiner’s interpretation of the scope of the claims.
Furthermore, the Examiner Interview provides a means to effectively advance prosecution and to better formulate a strategy to execute 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 prosecution of the patent application with the current Examiner. When this happens, the Applicant can then file an appeal to the Board of Patent
Appeals and Interferences (BPAI) at the USPTO. As a result, the Applicant avoids spending time and money filing an unnecessary response to the Office Action that more
than likely will not advance prosecution. In those instances, the Applicant spends less time and money in prosecuting the patent application than to continue to argue
with the Examiner for another unfruitful iteration.
Another strategy to consider is evaluate a patent portfolio to identify those patent applications that are not deemed to have commercial value. Instead of taking the
general approach, which is abandoning applications that do not appear to be making progress in prosecution, it may be advisable to implement an evaluation process that
would, at a minimum, attempt to evaluate the potential value of an invention at the time of conception. In other words, prior to preparing and filing the patent
application, it is advisable to consider whether the invention may be commercially successful. If there is a possibility of commercial success, then preparations can be made
to draft the patent application. If, however, the invention is deemed to have little or no chance of commercial success, then businesses with a low budget may decide not to
waste scarce financial resources to prepare and prosecute the patent application.
Evaluating the value of the invention should not only be performed when the invention is conceived, but also when a first Office Action is issued with respect to the
patent application. Due to the tremendous backlog at the USPTO, a first Office Action may issue three or more years after the filing of the patent application in some
cases. Since significant time may have elapsed, evaluating the potential monetary value of the patent application in view of the market trends since filing would be of
benefit when the first Office Action is issued. This allows the Applicant to decide whether or not it is beneficial to expend resources prosecuting the patent
The evaluation of the patent application should also occur when the USPTO issues a Notice of Allowance and when maintenance fees are due. Generally, when a patent is
issued, the Applicant is required to pay an issue fee, as well as subsequent maintenance fees during the life of the issued patent. These fees can be significant.
Therefore, prior to payment of an issue fee or a maintenance fee, it may be beneficial to evaluate the value of the patent application at this stage. This evaluation
should provide the Applicant with a better understanding of the potential value of the patent. Also, the Applicant may be able to better determine whether the patent
may experience, or already is experiencing, market success. If the potential market success is outweighed by the cost of maintaining the patent, then it would be wise
to abandon the application before paying such a fee.
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.
The strategies above may help to streamline patent prosecution from both a fiscal and temporal perspective. Helpful strategies include as drafting a more complete
patent application up front, determining whether Office Action is complete, filing thorough Responses and conducting Examiner Interviews. Such strategies can have
a profound impact on a company’s bottom line and the effectiveness of the company's intellectual property program.