Posts Tagged: "patent examiners"

In the United States patent system, patent applications are handled by two separate, yet equally important, groups: the patent practitioners, who prepare and prosecute applications on behalf of inventors or their assignees; and the patent examiners, who examine the applications for the United States Patent and Trademark Office (USPTO) for patentability under U.S. patent law. Ryan Potts worked at the USPTO for over seven years, including several as a primary examiner, before joining Lando & Anastasi. Rob Lichter worked at the USPTO as a junior patent examiner before becoming a law firm associate. The following is a list of tips and insights to understanding and interacting with U.S. patent examiners.

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.

That feeling that you are a fraud and that, one day, people will find out you have no idea what you are doing has a name—Impostor Syndrome. It is common among young attorneys and inexperienced patent professionals and can strike when you get that first job, during law school, or during conversations with supervisors. One particular situation where imposter syndrome can be especially prevalent for patent prosecutors is interviews with patent examiners. Imposter syndrome can make you feel like you are not qualified to represent your client or that you don’t deserve your accomplishments. It is estimated that at least 70% of successful people have experienced Impostor Syndrome.

The USPTO recently announced the implementation of the first phase of the Access to Relevant Prior Art (RPA) Initiative. The initiative is being designed to reduce the burden placed upon patent applicants to comply with their duty of disclosure through the use of automated tools which import relevant prior art and other pertinent information into pending U.S. patent applications as quickly as possible.

In an ideal world, your chance of getting a patent allowed is based on the merits of your patent application and independent of the largely random assignment of the patent examiner.  As any patent attorney knows, however, this is not the case.  Some examiners allow patents too easily and others seem predisposed against allowing any patents at all… The patent application grant rate across the USPTO is 66%.  One would expect that a distribution of examiner grant rates would follow a bell-like curve with a reasonably small standard deviation, but that is not what the data shows.

It is irresponsible for adults to give children who fail to complete their work credit based on the excuse that the children could have, should have, would have completed their assignments. It is much more inequitable for the U.S Patent Office to deprive inventors of the credit they deserve (in the form of patent allowances) because some conjured up combination of disconnected individuals—who have little, if any, temporal or linguistic ability to communicate with one another—could have, should have, would have eventually produced the claimed invention.

The patent process is long and complex, but well worth the effort if it means protecting your invention and your new company. Key decisions made along the way can help simplify future steps in the process and make obtaining a patent significantly more efficient. Early on, determining a patent scope through patentability searches can help narrow a patent application to the important novel aspects that are most worthwhile to protect. Similarly, preparing a thorough provisional application can make the non-provisional application preparation much simpler and afford better protection against later published works or filings by others. By thinking about these key decisions ahead of time and being aware of the patent process, you can be more prepared when the time comes to seek protection for your invention.

After several years in which the U.S. Patent and Trademark Office (PTO) did not seem to have an official position on the issue, and many Patent Trial and Appeal Board (PTAB) panels took a position that was clearly at variance with the Administrative Procedure Act (APA), the PTO recently seems to be acquiescing to principles that the patent bar has been urging for years: (a) the PTO is subject to the same Administrative Procedure Act obligations as any other agency, and therefore cannot make factual findings without substantial evidence, and (b) there’s no carve-out for factual findings underlying § 101 subject matter eligibility rejections.

The moving target rejections were largely due to the fact that the examiner’s first clear explanation that she was relying on structural identity, and not inherency, appeared in the examiner’s answer. Judge Reyna explained: “[T]he equivocal nature of the examiner’s and Board’s remarks throughout the examination of the ‘989 application, including whether inherency was the basis for the rejection, clouded the issues before Durance.”

In this article, I compute a “three-year grant rate” that shows the probability of obtaining a granted patent within three years of the first office action. This three-year grant rate tells you how difficult an examiner is and when you can expect to be granted a patent. The greatest benefit of the three-year grant rate is that it incorporates information about both the difficulty of the examiner and the length of time to obtain a patent into a single, easy to understand number. If your examiner has a three-year grant rate of 18%, it is easy to explain to your client that they have an 18% chance of getting a patent issued in three years.

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the memo recognizes the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and instructs examiners to abide by its holding. Berkheimer itself held that the question of whether certain claim limitations represent well-understood, routine, or conventional activity under Alice Step 2B is a factual issue, with Berkheimer precluding summary judgment that all of the claims at issue were not patent eligible. This principle was then reaffirmed by the Federal Circuit a week later in Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) in the context of a judgment on the pleadings and judgment as a matter of law.

We recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting arguments in response to the Office Action did not convince the examiner to withdraw the rejection. We checked the examiner’s allowance rate and noticed it to be 30% below the average for the examiner’s art unit. Considering this and other factors, we recommended appeal to the client and provided the examiner’s statistics in support of our recommendation. The client was appreciative that we backed up our recommendation with data, and was convinced that the outlook for continuing prosecution with the examiner was not promising. The client authorized an appeal. Upon submission of our Appeal Brief, the examiner elected not to maintain the rejection, and instead issued a Notice of Allowance. That client has since asked that we consider examiner statistics routinely for other cases.

The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for at least one ground of rejection. A case is only reported affirmed-in-part by the PTO’s statistics if at least one claim remains standing, regardless of which legal issue ((§101, §103, §112, etc.) the claim was originally rejected. Since a large portion of PTAB ex parte appeals involve rejections over more than one ground of rejection (between 35%-45% according to this statistical estimate), this reporting process masks what the PTAB is deciding on each legal issue presented to it. Because the USPTO data does not report the outcome of each legal issue in multiple issue cases, it is impossible to collect statistically meaningful data on outcomes of specific legal issues from the data set from the FOIA website.

Today’s environment demands an agile approach, one that involves substantial up-front planning, followed by continuously learning from both the client and the marketplace, using a strategy that involves constructing a defensive and offensive patent portfolio from a collection of laser-focused patents, rather than a single overarching patent intended to cover the invention in one fell swoop… More concretely, the strategy that we typically follow nearly always avoids the need to appeal, and therefore avoids the pitfalls of the PTAB, as follows. The foundation is to write a solid and comprehensive patent specification, one that is intended to cover the invention both broadly and deeply, in an effort to enable as many embodiments as possible for as long into the future as possible, encompassing both the client’s and competitors’ technologies. The first patent application that we file, however, typically has relatively narrow claims for a variety of strategic reasons…