Tips for Effective Patent Application Drafting and Patent Prosecution

By now, patent attorneys who do a fair amount of patent application drafting and patent prosecution should be well versed in the fairly recent PTO rule changes dealing with various aspects of patent prosecution. Rather than discuss those rule changes, this article discusses 10 tips for better patent application drafting and patent prosecution. The first two tips deal with patent application drafting, the next four tips deal with prosecution of a patent application, the next three tips deal with things to do after receiving a notice of allowance, and the last tip deals with all stages of patent prosecution.

Tip #1: Draft Claims of Different Scope in a Patent Application

It goes without saying that a patent application should have different sets of claims of varying scope. Also, a patent application should have, if at all possible, at least one set of method claims, at least one set of non-”means-plus-function” apparatus claims, and at least one set of “means-plus-function” claims. That way, in the event that one type of claim (eg, method claims) is given a broader scope of protection than another type of claim (eg, apparatus claims) by the courts in the year 2013, you will not be ruing the day that you did not include such claims in the patent that you wrote and prosecuted for a client many years earlier.

Tip #2: Check to See If the Patent Application Is Entitled to Special Status

The PTO sets forth various categories by which a patent application may be entitled to expedited prosecution by the PTO. See Section 708.02 of the Manual of Patent Examining Procedure (M.P.E.P.). Some categories, such as when at least one inventor is 65 years of age or older, do not require an extra fee in order to obtain special status. It is also worth noting that the PTO rules now allow expedited status for patent applications related to “Countering Terrorism.”

Tip #3: File Formal Drawings as Soon as Practical

Patent Applications filed after May 29, 2000, are subject to Patent Term Adjustment (PTA), whereby it behooves the patent prosecutor to make sure that nothing he/she does negatively affects the term of a patent that will issue from a patent application that he/she prosecutes. The “old” way of waiting until receipt of a notice of allowance in order to file formal drawings is no longer feasible, since that would negatively affect patent term and would count against the PTA built up for a patent application. While clients may balk in having to pay for formal drawings at an earlier date than they may have had to for non-PTA patent applications, a brief explanation to the clients as to why this is important to ensure maximum patent term should placate them.

Tip #4: File an Information Disclosure Statement (IDS) Within 1 Month of Date of Communication in Counterpart Foreign Patent Application

PTA may count against you if an IDS is filed more than 1 month after a Communication (eg, Office Action; Search Report in PCT case) from a foreign patent office for a counterpart foreign patent application, in the case where the IDS includes references cited in that Communication. To avoid this problem, one should: 1) inform all of the foreign law firms that you work with of this rule, and the need for them to provide you with the references and the Communication citing those references as soon as they can, and 2) as soon as you get the IDS information from the foreign law firms, file that information with the PTO.

Tip #5: Amending Claims in a Response to an Office Action

For claim amendments under 37 C.F.R. '1.121 that remove only a small number of characters or numbers from a claim, such as the removal of “4″ or “a,” whereby it is difficult to differentiate a non-strikethrough character (eg, 4, a) from a strikethrough character (eg, 4 , a) , the PTO recommends two possible ways to do this. The first way is to use double brackets both before and after the text-to-be-deleted, such as ” … comprising [4] 3  nodes in a network … ” The second way is to include words before and/or after the text to be deleted, such as ” … comprising 4 nodes  comprising 3 nodes  in a network … ” You always want to ensure that the PTO correctly makes the changes to the claims that you requested. Note that this type of claim amendment does not apply to Reissue applications.

Tip #6: Submitting Drawing Corrections in Response to Office Action Objection

Drawing objections that are made in an Office Action must be addressed in a Reply to that Office Action, and cannot be deferred. One must either: 1) include Remarks indicating why the Examiner's drawings objections are incorrect in the case where no corrected drawings are being submitted with the Reply, or 2) include corrected formal drawings for the drawings that were objected to in the Office Action. Failure to do so can result in Abandonment of the patent application. If one is submitting corrected formal drawings in response to an objection to the drawings, it may also be useful to submit marked-up drawings in red, as well as to provide a written description in the Reply as to the changes that were made.

Tip #7: If a Restriction Was Made Previously, Determine If Rejoinder Is Feasible

The PTO sets forth the circumstances whereby rejoinder of non-elected claims should occur. See Section 821.04 of the M.P.E.P. For example, if the applicant elects claims directed to the product, and a product claim is subsequently found allowable, withdrawn process claims that depend from or otherwise include all the limitations of the allowable product claim will be rejoined. If your patent application is entitled to such rejoinder, make sure to check for this when you are reviewing the patent application file after receiving a notice of allowance. If rejoinder has not been done, a request to the PTO for rejoinder of the withdrawn claims should be filed, and/or a phone call to the Examiner should be made.

Tip #8: Check PTA Calculated by PTO in the Notice of Allowance

For patent applications entitled to PTA, you should check the PTO's calculation against your own calculation of what the PTA should be for a patent application. Note that the PTO does not compute “future” PTA, such as what a patent application would be entitled to if it issues more than 3 years from the application filing date, and thus you also need to check the PTA calculation on the face of the issued patent to ensure that the correct PTA amount appears on the patent (such as when a patent issues 3 years and 2 months after the filing date, whereby the extra 2 months should be included in the PTA for the patent). If the PTO made an error, you need to address it, setting forth the basis for why the PTA appearing on the face of the patent is incorrect and requesting that it be corrected. An application for patent term adjustment (and required PTO fee) or a request for reinstatement of patent term (and required PTO fee) should be filed.

Tip #9: Check Examiner's Reasons for Allowance in Notice of Allowance

There has been at least one CAFC case where the patented claims were limited based on comments made by the Examiner in the “Reasons for Allowance” section of a Notice of Allowability that accompanies a Notice of Allowance. One should review such comments and file a Response if such comments are incorrect (eg, the comments from the Examiner deal with certain “allowable” features that are not recited in at least one independent claim). For example, if appropriate, you can file a Paper with the PTO stating that: “The Reasons for Allowance indicate that the claims were allowed because the prior art did not teach or suggest features A, B, C and D. However, it is noted that claim 1 only recites features A, B and C, whereby Applicants submit that the combination of features A, B and C are not disclosed, taught or suggested by the art cited by the PTO.”

Tip #10: Always Be Courteous to the Patent Examiner, Even in Cases Where You Think That He/She Is Completely Wrong as to a Particular Issue on a Patent Application That You Are Handling.

What comes around, goes around!

By now, patent attorneys who do a fair amount of patent application drafting and patent prosecution should be well versed in the fairly recent PTO rule changes dealing with various aspects of patent prosecution. Rather than discuss those rule changes, this article discusses 10 tips for better patent application drafting and patent prosecution. The first two tips deal with patent application drafting, the next four tips deal with prosecution of a patent application, the next three tips deal with things to do after receiving a notice of allowance, and the last tip deals with all stages of patent prosecution.

Tip #1: Draft Claims of Different Scope in a Patent Application

It goes without saying that a patent application should have different sets of claims of varying scope. Also, a patent application should have, if at all possible, at least one set of method claims, at least one set of non-”means-plus-function” apparatus claims, and at least one set of “means-plus-function” claims. That way, in the event that one type of claim (eg, method claims) is given a broader scope of protection than another type of claim (eg, apparatus claims) by the courts in the year 2013, you will not be ruing the day that you did not include such claims in the patent that you wrote and prosecuted for a client many years earlier.

Tip #2: Check to See If the Patent Application Is Entitled to Special Status

The PTO sets forth various categories by which a patent application may be entitled to expedited prosecution by the PTO. See Section 708.02 of the Manual of Patent Examining Procedure (M.P.E.P.). Some categories, such as when at least one inventor is 65 years of age or older, do not require an extra fee in order to obtain special status. It is also worth noting that the PTO rules now allow expedited status for patent applications related to “Countering Terrorism.”

Tip #3: File Formal Drawings as Soon as Practical

Patent Applications filed after May 29, 2000, are subject to Patent Term Adjustment (PTA), whereby it behooves the patent prosecutor to make sure that nothing he/she does negatively affects the term of a patent that will issue from a patent application that he/she prosecutes. The “old” way of waiting until receipt of a notice of allowance in order to file formal drawings is no longer feasible, since that would negatively affect patent term and would count against the PTA built up for a patent application. While clients may balk in having to pay for formal drawings at an earlier date than they may have had to for non-PTA patent applications, a brief explanation to the clients as to why this is important to ensure maximum patent term should placate them.

Tip #4: File an Information Disclosure Statement (IDS) Within 1 Month of Date of Communication in Counterpart Foreign Patent Application

PTA may count against you if an IDS is filed more than 1 month after a Communication (eg, Office Action; Search Report in PCT case) from a foreign patent office for a counterpart foreign patent application, in the case where the IDS includes references cited in that Communication. To avoid this problem, one should: 1) inform all of the foreign law firms that you work with of this rule, and the need for them to provide you with the references and the Communication citing those references as soon as they can, and 2) as soon as you get the IDS information from the foreign law firms, file that information with the PTO.

Tip #5: Amending Claims in a Response to an Office Action

For claim amendments under 37 C.F.R. '1.121 that remove only a small number of characters or numbers from a claim, such as the removal of “4″ or “a,” whereby it is difficult to differentiate a non-strikethrough character (eg, 4, a) from a strikethrough character (eg, 4 , a) , the PTO recommends two possible ways to do this. The first way is to use double brackets both before and after the text-to-be-deleted, such as ” … comprising [4] 3  nodes in a network … ” The second way is to include words before and/or after the text to be deleted, such as ” … comprising 4 nodes  comprising 3 nodes  in a network … ” You always want to ensure that the PTO correctly makes the changes to the claims that you requested. Note that this type of claim amendment does not apply to Reissue applications.

Tip #6: Submitting Drawing Corrections in Response to Office Action Objection

Drawing objections that are made in an Office Action must be addressed in a Reply to that Office Action, and cannot be deferred. One must either: 1) include Remarks indicating why the Examiner's drawings objections are incorrect in the case where no corrected drawings are being submitted with the Reply, or 2) include corrected formal drawings for the drawings that were objected to in the Office Action. Failure to do so can result in Abandonment of the patent application. If one is submitting corrected formal drawings in response to an objection to the drawings, it may also be useful to submit marked-up drawings in red, as well as to provide a written description in the Reply as to the changes that were made.

Tip #7: If a Restriction Was Made Previously, Determine If Rejoinder Is Feasible

The PTO sets forth the circumstances whereby rejoinder of non-elected claims should occur. See Section 821.04 of the M.P.E.P. For example, if the applicant elects claims directed to the product, and a product claim is subsequently found allowable, withdrawn process claims that depend from or otherwise include all the limitations of the allowable product claim will be rejoined. If your patent application is entitled to such rejoinder, make sure to check for this when you are reviewing the patent application file after receiving a notice of allowance. If rejoinder has not been done, a request to the PTO for rejoinder of the withdrawn claims should be filed, and/or a phone call to the Examiner should be made.

Tip #8: Check PTA Calculated by PTO in the Notice of Allowance

For patent applications entitled to PTA, you should check the PTO's calculation against your own calculation of what the PTA should be for a patent application. Note that the PTO does not compute “future” PTA, such as what a patent application would be entitled to if it issues more than 3 years from the application filing date, and thus you also need to check the PTA calculation on the face of the issued patent to ensure that the correct PTA amount appears on the patent (such as when a patent issues 3 years and 2 months after the filing date, whereby the extra 2 months should be included in the PTA for the patent). If the PTO made an error, you need to address it, setting forth the basis for why the PTA appearing on the face of the patent is incorrect and requesting that it be corrected. An application for patent term adjustment (and required PTO fee) or a request for reinstatement of patent term (and required PTO fee) should be filed.

Tip #9: Check Examiner's Reasons for Allowance in Notice of Allowance

There has been at least one CAFC case where the patented claims were limited based on comments made by the Examiner in the “Reasons for Allowance” section of a Notice of Allowability that accompanies a Notice of Allowance. One should review such comments and file a Response if such comments are incorrect (eg, the comments from the Examiner deal with certain “allowable” features that are not recited in at least one independent claim). For example, if appropriate, you can file a Paper with the PTO stating that: “The Reasons for Allowance indicate that the claims were allowed because the prior art did not teach or suggest features A, B, C and D. However, it is noted that claim 1 only recites features A, B and C, whereby Applicants submit that the combination of features A, B and C are not disclosed, taught or suggested by the art cited by the PTO.”

Tip #10: Always Be Courteous to the Patent Examiner, Even in Cases Where You Think That He/She Is Completely Wrong as to a Particular Issue on a Patent Application That You Are Handling.

What comes around, goes around!