Tips for Facilitating Patent Prosecution

As many patent practitioners are well aware, prosecution of patent applications has become a slow, tedious process. The U.S. Patent and Trademark Office ('PTO') acknowledges a large backlog of cases in many of its art units, with some art units having a pendency of at least 3 or 4 years. For many fields of technology, including computer and telecommunications, it is imperative to obtain a patent as soon as possible; otherwise, the patented technology will become stale by the time the patent issues, thereby making the patent practically worthless. This article discusses several ways by which a patent practitioner can speed up the patent prosecution treadmill.

Filing of a Patent Application

At the filing stage, there are several things that can be done to speed up the prosecution of a patent application.

1) Check to see if a Petition to Make Special can and should be filed for your patent application. See MPEP '708.02. For example, are any of the inventors over 65 years of age? Are any of the inventors in poor health? Is the patent application related to anti-terrorism? Is the patent application related to a product for the disabled? If the answer to any of these questions is 'Yes,' then the application is entitled to special expedited examination status.

2) File Information Disclosure Statements ('IDSs') as soon as possible, preferably at the same time as the filing of the application. Of course, if you have a counterpart foreign application and relevant art is cited in that case after the U.S. filing date, you must file an IDS in order to bring such art to the attention of the U.S. patent examiner. See 37 C.F.R. '1.56.

3) If the patent application is business method related, try to steer it away from this technology to the greatest extent possible, since this art unit of the PTO has an extremely long patent pendency time. Also, another reason to steer away from this art unit is that it has a very low allowance rate, as compared with other art units of the PTO. How can this be done? Focus on computer aspects of the invention (if possible).

Prosecution Stage

At the patent prosecution stage (ie, the period from the receipt of a first Office Action up to the receipt of a notice of allowance) there are things that can be done by the patent practitioner to speed up the process.

Responding to a Non-Final (eg, First) Office Action

1) Respond as soon as possible to the Office Action, preferably within 1 month of the Office Action mailing date;

2) Perform docket status checks after filing the response and frequently check the U.S. PTO's Patent Application Information System ('PAIR'), which is available from its Web site (www.uspto.gov) to see if the response has been timely entered and forwarded to the examiner for examination. Call the patent examiner handling your case, if necessary, to check on the status of the response that was filed.

Responding to a Final Office Action

1) If a response is to be made to a Final Office Action, try to file that response within 2 months of the mailing date of such action. It is the author's experience that the PTO is not turning around after-final responses quickly, as it is taking 2 or 3 months to do so. The filing of the response within 2 months of the mailing date of the Final Office Action preserves the Applicant's rights with respect to only needing, at most, a 1-month extension of time in order to file a Request for Continued Examination ('RCE') or a Notice of Appeal.

2) If the response to the Final Office Action cannot be filed within 2 months of the mailing date, then you have to hope that the examiner acts on your case fairly quickly. If it has been over 1 month from the date when you filed your response, call the examiner to try to politely urge him/her to act on your response.

3) If the PTO does not act on your response quickly, such as when you receive an Advisory Action more than 1 month from the date when you filed the after-final response, you should consider filing a 'Petition Due to Late PTO Response to After-Final Reply pursuant to 37 C.F.R. '1.182 in order to recover some of the extension of time fees associated with continuing prosecution. The author is aware of one such petition that was filed by a colleague at his firm, whereby the petition cited MPEP Section 714.13, and required a petition fee. MPEP '714.13 recites:

An examiner is expected to turn in a response to an amendment after final rejection within 10 calendar days from the time the amendment is received by the examiner. A reply to an amendment after final rejection should be mailed within 30 days of the date the amendment is received by the Office (emphasis added).

To date, that petition has not been acted on by the Petitions Branch of the PTO, but it probably is a worthwhile thing to do, especially if the slowness of the PTO required both a second and third month extension of time to be filed when such extensions would not have been needed if the PTO would have acted on the after-final response promptly.

Appeals

1) It is noted that the pendency for appeals has shrunk dramatically in recent times, whereby it typically takes less than a year from the time of filing of the appeal brief to the time of a decision by the Board of Patent Appeals and Interferences. Thus, the appeals route may now be the quickest way to obtain a patent. Indeed, in the past, it was not uncommon for an applicant to experience 3- and 4-year wait times from the filing of an Appeal Brief to the time of a Decision on Appeal.

2) Also, a Pre-Appeal Brief should be considered after filing a Notice of Appeal in order to speed up the allowance of the patent application. When a Pre-Appeal Brief is filed, three members of the art unit review it, and if they agree with the arguments made, the case is allowed without even going to the Board of Patent Appeals and Interferences. The Pre-Appeal system is currently a pilot program offered by the PTO (see New Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005)). There are indications that this program will be extended indefinitely due to its popularity.

After-Allowance Stage

1) The PTO now routinely performs a second-eyes review of patent applications that have been allowed by patent examiners. This review tends to gum up the works. In fact, it can take up to 1 year or more for the second eyes review to be completed. What to do? Call the examiner to try to get him/her to urge the second-eyes reviewer to review your case. Try to get the name of the second-eyes reviewer from the patent examiner handling the prosecution of your case and call him/her in order to try to speed up this review process.

2) File a 37 C.F.R. '1.312 amendment only if absolutely necessary, since such a filing will slow down the patent issuance process significantly as it requires the file to be transferred back from the issue branch of the PTO to the group art unit that handled the prosecution of the case. If there are small problems in the claims, then it may be wise to just leave them alone. Alternatively, you could consider filing a Certificate of Correction after the patent has granted.

Conclusion

The PTO is having a hard time dealing with the overload of patent applications, and so it is especially important for the patent practitioner to do his/her best to speed up the patent prosecution process, or at least not to slow it down. The author hopes that the tips provided above will help in that regard.

Phillip Articola is an intellectual property attorney with Foley and Lardner, in Washington, D.C. Articola's practice focuses primarily on patent prosecution in the computer and telecommunications technical fields. The views expressed in this article are solely those of the author and should not be attributed to Foley and Lardner.

As many patent practitioners are well aware, prosecution of patent applications has become a slow, tedious process. The U.S. Patent and Trademark Office ('PTO') acknowledges a large backlog of cases in many of its art units, with some art units having a pendency of at least 3 or 4 years. For many fields of technology, including computer and telecommunications, it is imperative to obtain a patent as soon as possible; otherwise, the patented technology will become stale by the time the patent issues, thereby making the patent practically worthless. This article discusses several ways by which a patent practitioner can speed up the patent prosecution treadmill.

Filing of a Patent Application

At the filing stage, there are several things that can be done to speed up the prosecution of a patent application.

1) Check to see if a Petition to Make Special can and should be filed for your patent application. See MPEP '708.02. For example, are any of the inventors over 65 years of age? Are any of the inventors in poor health? Is the patent application related to anti-terrorism? Is the patent application related to a product for the disabled? If the answer to any of these questions is 'Yes,' then the application is entitled to special expedited examination status.

2) File Information Disclosure Statements ('IDSs') as soon as possible, preferably at the same time as the filing of the application. Of course, if you have a counterpart foreign application and relevant art is cited in that case after the U.S. filing date, you must file an IDS in order to bring such art to the attention of the U.S. patent examiner. See 37 C.F.R. '1.56.

3) If the patent application is business method related, try to steer it away from this technology to the greatest extent possible, since this art unit of the PTO has an extremely long patent pendency time. Also, another reason to steer away from this art unit is that it has a very low allowance rate, as compared with other art units of the PTO. How can this be done? Focus on computer aspects of the invention (if possible).

Prosecution Stage

At the patent prosecution stage (ie, the period from the receipt of a first Office Action up to the receipt of a notice of allowance) there are things that can be done by the patent practitioner to speed up the process.

Responding to a Non-Final (eg, First) Office Action

1) Respond as soon as possible to the Office Action, preferably within 1 month of the Office Action mailing date;

2) Perform docket status checks after filing the response and frequently check the U.S. PTO's Patent Application Information System ('PAIR'), which is available from its Web site (www.uspto.gov) to see if the response has been timely entered and forwarded to the examiner for examination. Call the patent examiner handling your case, if necessary, to check on the status of the response that was filed.

Responding to a Final Office Action

1) If a response is to be made to a Final Office Action, try to file that response within 2 months of the mailing date of such action. It is the author's experience that the PTO is not turning around after-final responses quickly, as it is taking 2 or 3 months to do so. The filing of the response within 2 months of the mailing date of the Final Office Action preserves the Applicant's rights with respect to only needing, at most, a 1-month extension of time in order to file a Request for Continued Examination ('RCE') or a Notice of Appeal.

2) If the response to the Final Office Action cannot be filed within 2 months of the mailing date, then you have to hope that the examiner acts on your case fairly quickly. If it has been over 1 month from the date when you filed your response, call the examiner to try to politely urge him/her to act on your response.

3) If the PTO does not act on your response quickly, such as when you receive an Advisory Action more than 1 month from the date when you filed the after-final response, you should consider filing a 'Petition Due to Late PTO Response to After-Final Reply pursuant to 37 C.F.R. '1.182 in order to recover some of the extension of time fees associated with continuing prosecution. The author is aware of one such petition that was filed by a colleague at his firm, whereby the petition cited MPEP Section 714.13, and required a petition fee. MPEP '714.13 recites:

An examiner is expected to turn in a response to an amendment after final rejection within 10 calendar days from the time the amendment is received by the examiner. A reply to an amendment after final rejection should be mailed within 30 days of the date the amendment is received by the Office (emphasis added).

To date, that petition has not been acted on by the Petitions Branch of the PTO, but it probably is a worthwhile thing to do, especially if the slowness of the PTO required both a second and third month extension of time to be filed when such extensions would not have been needed if the PTO would have acted on the after-final response promptly.

Appeals

1) It is noted that the pendency for appeals has shrunk dramatically in recent times, whereby it typically takes less than a year from the time of filing of the appeal brief to the time of a decision by the Board of Patent Appeals and Interferences. Thus, the appeals route may now be the quickest way to obtain a patent. Indeed, in the past, it was not uncommon for an applicant to experience 3- and 4-year wait times from the filing of an Appeal Brief to the time of a Decision on Appeal.

2) Also, a Pre-Appeal Brief should be considered after filing a Notice of Appeal in order to speed up the allowance of the patent application. When a Pre-Appeal Brief is filed, three members of the art unit review it, and if they agree with the arguments made, the case is allowed without even going to the Board of Patent Appeals and Interferences. The Pre-Appeal system is currently a pilot program offered by the PTO (see New Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005)). There are indications that this program will be extended indefinitely due to its popularity.

After-Allowance Stage

1) The PTO now routinely performs a second-eyes review of patent applications that have been allowed by patent examiners. This review tends to gum up the works. In fact, it can take up to 1 year or more for the second eyes review to be completed. What to do? Call the examiner to try to get him/her to urge the second-eyes reviewer to review your case. Try to get the name of the second-eyes reviewer from the patent examiner handling the prosecution of your case and call him/her in order to try to speed up this review process.

2) File a 37 C.F.R. '1.312 amendment only if absolutely necessary, since such a filing will slow down the patent issuance process significantly as it requires the file to be transferred back from the issue branch of the PTO to the group art unit that handled the prosecution of the case. If there are small problems in the claims, then it may be wise to just leave them alone. Alternatively, you could consider filing a Certificate of Correction after the patent has granted.

Conclusion

The PTO is having a hard time dealing with the overload of patent applications, and so it is especially important for the patent practitioner to do his/her best to speed up the patent prosecution process, or at least not to slow it down. The author hopes that the tips provided above will help in that regard.

Phillip Articola is an intellectual property attorney with Foley and Lardner, in Washington, D.C. Articola's practice focuses primarily on patent prosecution in the computer and telecommunications technical fields. The views expressed in this article are solely those of the author and should not be attributed to Foley and Lardner.