Jeff O’Neill, Ph.D.

In an ideal world, every patent law firm, from a small practice drafting 50 patents a year to a large firm drafting thousands a year, would deliver patents for their clients that contain no errors. In reality though, patent drafting is complex and tedious work, and errors inevitably occur. So as a client, how do you ensure the highest quality patent applications? When it comes to quality work and the prevalence of errors, does the size of the firm you choose matter? In a recent study of proofreading errors and firm size, we found that it just might.

In an ideal world, issued patents would not contain errors. In reality, patent drafting is tedious and time-consuming work and perfection is not an attainable goal. The patent industry seems to be steadily getting better, though. In a recent study, we uncovered an 11.24% decrease in errors per patent over the past four years. We observed this decrease by reviewing every patent issued by the U.S. Patent and Trademark Office (USPTO) since 2020 – nearly 1.4 million patents.

After a patent application is filed with the USPTO, it gets assigned to an art unit and a patent examiner in that art unit who is responsible for reviewing the application, doing a prior art search, and determining whether to grant a patent…. In the past, this process was manual. People would review patent applications to assign classification codes, and then other people would determine the art unit and examiner to be assigned using the classification codes. More recently, the USPTO is automating the assignment process. The assignment process is a great candidate for automation using machine learning, because large amounts of training data are available to train a machine learning model. Automating the assignment process has several advantages: lower costs, faster processing, and more consistent and likely better assignments of applications to art units and examiners.

Companies spend considerable sums of money to develop patent portfolios that protect their valuable innovations. Given the large stakes, it behooves companies to obtain high quality patents. I’ll start this article with an example of a patent mistake that resulted in a bad outcome for the patent owner. iRobot lost a patent infringement claim against a competitor that perhaps could have been avoided. The issue was that important concepts of the claims were not described in the patent, and the meaning of the claims was not clear. The independent claims included the phrase “instructions configured to cause a processor” but the only use of “instructions” in the patent related to operational instructions for a user. Because the patent did not sufficiently describe the “instructions” in the claims, iRobot did not obtain its desired claim construction, and the Federal Circuit found no infringement. It seems plausible that better claim drafting might have avoided these errors and achieved a better outcome for iRobot.

Any patent attorney knows that each patent examiner can vary greatly in approach to examination. In this article, five different types of patent examiners and suggest prosecution strategies for each to help you get better outcomes for your clients.