Practical Tips for Increasing Patent Allowance Rates *

Practical Tips for Increasing Patent Allowance Rates *

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The first commandment of patent prosecution should be to know your patent examiner. To do this, patent practitioners need to consider examiner time constraints and production goals, what examiners need to see to allow an application, and must have an appreciation for what examiners are being instructed to do by supervisors.

Interactions between patent examiners and patent practitioners are often tense and frequently unhelpful.  Having a better understanding of an examiner’s expectations and approaching patent prosecution with a cooperative mindset will pay dividends, particularly when a practitioner is willing to work to make an examiner’s job easier.

This panel will undertake a wide-ranging discussion on examiner statistics, pressures, and expectations, as well as discuss the micro vs. macro strategy relating to whether you are trying to increase allowance on a particular application or for an entire portfolio. The specific topics the panel will discuss include:

(1) Deciphering examiner statistics for insights on tendencies.

(2) Understanding examiner time limitations and what practitioners can do to help streamline an application (i.e., 112 issues, translations, drafting differently in anticipation of 101).

(3) The importance of keeping original claim sets reasonable (i.e., narrow isn’t bad if it is part of a comprehensive strategy).

(4) The importance of properly interviewing examiners (and without fishing expeditions).

(5) The variety of procedural tools and filings that can and do raise allowance rates (i.e., PPH, Track One, etc.)

Materials

Prioritized Examination: Why Filing a Track One Application Makes Sense

PPH at the USPTO: Following the Patent Prosecution Highway for a Smooth Ride

Note: This panel will be moderated by Gene Quinn, President & CEO of IPWatchdog, Inc.