By Lisa Velez
The United States Patent and Trademark Office (USPTO) has recently changed the counting system used to track the production of patent Examiners www.uspto.gov/web/offices/ac/ahrpa/opa/documents/briefing_for_corps-final_draft-093009-external-jrb.pdf which is now in effect. The Examiners have a quota system that is used for annual evaluations, retention and bonuses. The quota system, in general, assigns a set number of hours to each non-provisional patent application for the Examiner’s grade level (or position factor). The hours also change by technology complexity and, specifically, the higher the grade level (or position factor) of the Examiner, the lower the number of hours provided to the Examiner for a particular patent application. The total hours for a patent application for an Examiner’s position factor are mapped to two (2) counts.
The hours and count system assigned to a particular patent application was last changed in 1976. However, over the last 30 plus years, a significant number of domestic patents, foreign patents, literature and other non-published literature are readily available and should be reviewed by the Examiner when making a determination for issuance of a patent application into a US patent. During this time, technology advancements, the most notable, the World Wide Web (WWW), have made the Examiner’s job both easier and more challenging. The World Wide Web (WWW) is capable of delivering millions of bytes of data to the desktop computer. However, the Examiner only has human eyes that do not read at the speed of light. The WWW can provide the Examiner with infinitely more information that can be reviewed and considered from around the world. While, technological advancements facilitate the USPTO to produce higher quality patents, the Examiners still needs extra time to thoughtfully consider all the information when making a patenting decision.
The new count system does not increase the number of counts. Instead, the new count system modifies the distribution of counts to encourage higher quality of examination on the First Action on the Merits (FAOM). In the old system, the Examiner would get 1 count for the FAOM. With the new system, the Examiner receives 1.25 counts. Thus, the Examiner is encouraged to spend more time to prepare the FAOM. Furthermore, the new count system will slightly increase the number of hours per position factor assigned a patent application.
Another advantage to the Examiners is that a fraction of a count (.25) is provided for a Final Office Action (FOA). In past, the counts would be distributed at the FAOM and after Allowance or Abandonment. Now, the total counts appear to be shared somewhat more equitably along the examination process and the related Office Actions. In the new system, the remaining .75 of a count may be split between the FOA (.25) and an Allowance or Abandonment (.5). However, if a FOA was not required, the .75 of account would be applied to the Allowance or Abandonment.
The new count system also appears to encourage compact prosecution which generally means determine and identify the existence of patentable subject matter in an application www.uspto.gov/web/offices/pac/mpep/documents/0700_707_07_j.htm. In the past, the Examiner would get a full two (2) counts for each and every Request for Continued Examination (RCE) stemming from a single patent application instead of the full two (2) counts. Now, the counts for an RCE’s are incrementally decreased, which is not generally favorable to help the Examiners meet the production quota. In the new count system, the Examiner would get 1.75 counts for the first RCE and 1.50 counts for a second RCE. While, the Examiner’s technically should spend less time on a RCE, the overall amount of work burdened on the Examiners is large in consideration of the massive amount of patents both domestic and foreign, literature and non-published literature (such as advertisements on the Internet) that must be considered to evaluate the novelty and/or nonobviousness of an invention.
There are some additional advantages for the Examiners with the new count system in an effort to encourage compact prosecution. The Examiner may obtain extra time (one hour) to conduct an examiner initiated interview which could be used by the Examiner to negotiate amendments with the patent attorney or agent to place the application in condition for allowance. The USPTO is encouraging Examiners to identify, if possible, patentable subject matter as early as possible in the patent prosecution process. The theory may be to allow patent applications quicker so that the overall pendency can be reduced. For example, if the number of FOAs or other Office Actions after the FAOM can be reduced, the Examiner’s time would be freed to evaluate other applications waiting to be examined on the FAOM.
Filed under: Business, Inventor & Entrepreneur Updates, Patent Articles
Are you an ambitious inventor and filed a patent application with the United States Patent and Trademark Office (USPTO)? If you are such an ambitious inventor, there are things you may not know that can help you get a patent.
A “pro se” application is filed by the inventor representing himself or herself without a registered patent lawyer or agent. When a “pro se” application is being evaluated by the examiner of the USPTO, if patentable subject matter exists (meaning the invention has novel and non-obvious features), then the examiner, as part of their job, should draft one or more claims for the inventor. (See MPEP 707.07(j)).
The MPEP 707.07(j) states
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.
The cite from MPEP 707.07(j) allows the patentable subject matter to be in the “application,” which may include the detailed description, drawings, claims, abstract, etc. If the “pro se” inventor is not provided with recommendations from the examiner in a Non-Final Office Action (OA), do not be disappointed. The examiner may also recommend contacting a registered patent attorney or registered patent agent.
When the “pro se” inventor receives the OA, do not become overwhelmed. It is recommended that the inventor retrieve and review all patents cited by the examiner in the OA. Issued U.S. patents, published U.S. patent applications and many foreign patent type references may be obtained from www.patentfetcher.com for free (currently). Issued U.S. patents and published U.S. patent applications may be obtained from a host of other online services including the USPTO website, www.uspto.gov. Foreign patents may be obtained from the European Patent Office website, ep.espacenet.com.
After reading the patents, especially those relied upon in a rejection, the inventor is in the very best position to articulate the differences between their invention and an invention to another used in a rejection. If the inventor determines any differences, it is recommended that the inventor call the USPTO examiner to schedule a telephone interview to discuss the differences. The examiner’s contact information is generally found on the last page of the written part of the OA. It might be well to also communicate such differences to the examiner in writing before the scheduled telephone interview, either by email or a facsimile communication, to provide the examiner advanced notice as to the direction of the discussions.
When negotiating with the examiner, the “pro se” inventor may be required to identify where the novel or distinguishing features are in the drawings and the specification of the “pro se” application. The inventor should try to pin point language in the specification that clearly defines over the inventions used in a rejection. While an invention may have various differences, if possible, attempt to find features in the application that the inventions of the other patents could not incorporate. The “pro se” inventor may even ask the examiner during the scheduled interview to make any further recommendations or to write one or more claims.
The “pro se” inventor needs to be very cautious about claims prepared by an examiner as the examiner may write a very narrow claim that may have little practical value or very difficult to enforce. The “pro se” inventor may also seek representation to have only the claims reviewed by a patent attorney or agent or for guidance to amend the application to comply with the OA objections and rejections.
In 2007, the U.S. Supreme Court’s decision in KSR International Co. v. Teleflex Inc. has, in general, made it somewhat more difficult to receive a patent for a combination of known components. Recently, the USPTO has been very gracious to help “pro se” inventors as well as other inventors to obtain a patent. Since the new administration took office, the USPTO is diligently trying to help the “pro se” inventor obtain a patent and recognizes the value of intellectual property rights for individuals and small business.
Inventors are often faced with the challenge of funding the patenting process. In many cases, the inventor may forego a novelty search to save money in the near term but at great long term expense.
When determining whether to grant a patent, an examiner of the United States Patent & Trademark Office (USPTO) will search relevant areas known as class and subclasses directed to a particular field of invention associated with the patent application. The examiner may also electronically search other databases and the Internet. Nonetheless, after a search is conducted, the examiner will evaluate the most relevant references to determine if the claims of the patent application are novel. If the claims are novel, then the Examiner will also determine if the claims are non-obvious. Generally, if both these conditions (novelty and non-obvious) are meet, the Examiner may grant a patent.
The ultimate decision to grant or deny a patent application is made by the United States Patent & Trademark Office (USPTO), not by the patent practitioner, so the patent practitioner cannot guarantee that any application filed will issue as an allowed U.S. Patent. However, if an electronic search is conducted of at least issued patents and published patent applications, the practitioner has a better chance of finding issued patents or pending published applications that may adversely affect the patent application. In some instances, the search may yield results that would strongly suggest not moving forward with the preparation of a patent application; thus, saving the inventor the expense which could be thousands of dollars to prepare a non-provisional patent application.
The references discovered in a search can be used by the patent practitioner to carefully describe the invention in terms that are unique and which clearly articulate inventive features that the novel and/or non-obvious over some of the existing issued patents or published patent applications. Thus, the inventor’s chances of being successful at obtaining a patent are greatly increased. It is hard to anticipate all possible issued patents, literature, and non-literature references around the globe. Nonetheless, a search is money well spent.
Filed under: Inventor & Entrepreneur Updates, Patent Articles
By Lisa Velez
As a former patent examiner, one important feature a patent application can have is great drawings of the invention. A patent application typically requires multiple views, including interior and exterior profiles to show not only what can be seen on the outside but what is in the inside. As the old saying goes, “a picture is worth a 1000 words.” This old saying holds true in patent drafting and, especially, during prosecution when negotiating with the United States Patent and Trademark Office (USPTO).
Drawings of a patent application should bring the inventor’s invention alive. A carefully prepared set of drawings should display those features and sometimes variation that are new. These drawings help the patent practitioner direct the examiners attention as well as any future jury to those critical inventive features. Sometimes, an invention is not in a particular element but a combination of elements that are synergized in a new way to produce new acts. Drawings are also needed to capture this synergy.
Drawings are so important when evaluating the patent, as the patent application must show every feature of the invention specified in the claims, pursuant to 37 CFR §1.83. Therefore, investing in a professionally prepared set of drawings is money well spent.
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