CONTINUED CHANGES IN THE PATENT OFFICE 

There are many ongoing changes (turmoil) in the patenting process.  There have been the multiple Supreme Court decisions, e.g., KSR v. Teleflex.  The House has passed reform legislation and counterpart legislation is still expected to be voted on by the Senate.  The USPTO attempted to enact new rules (intended to be effective November 1, 2007) on its own initiative that would significantly limit the ability of the applicant to explore the patentability of his or her invention with the patent examiner.  However, the new rules were challenged in court and implementation has been enjoined.

With all this controversy, the job remains successfully negotiating patent applications to the award of meaningful patents.  Strategies must change.  The most promising new strategy has the unfortunate consequence of increasing the initial costs of applying for a patent.  However, it should also save money in the latter stages.

What I (and others) propose is getting the best search possible of the prior art.  The first step is defining what the invention is.  This creates the limits of the search.  Analyze the search results to determine what of the originally defined invention is new and patentable.  Include consideration what may be consider an obvious improvement by the examiner.

Use that insight to draft the claims of the application.  Draft the specification to support the claims.  With claims prepared based upon a through patent search, the first office action may include the allowance of some or all of the claims.  You will have, hopefully, performed the examiner’s work (which is what the patent office wants you to do).  You will have examined the art and discarded what is unpatentable (either as not novel or as obvious to a person skilled in the art).

November 7, 2007