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March 8, 2008

Gold Standard

A patent discloses an invention that is useful, valuable, and innovative; a patent that protects invention with the broadest possible claims, but still novel and non-obvious over the prior art; claims applicable under the doctrine of equivalents, untainted by prosecution estoppel; a patent that cites the most relevant prior art. This is the gold-standard patent that prosecutors strive toward.

A quality patent lives and breathes throughout its 20-years, anticipating and adapting to changes in technology and market.

Garnering a quality patent is itself an art form.

For inventors, the barriers to a quality patent are a double jigger: one part - lazy, stubborn examiners who follow PTO management's "reject, reject, reject" agenda; and one part - prosecutors who don't fully appreciate enforcement monetization aspects, who are more concerned with production and a quick filing.

Patent life cycle bifurcates: (1) getting, and (2) getting money out of the gotten. On the getting side, most prosecutors are specialists in grabbing the grant; their goal = allowance. Not being litigators, not having much if any enforcement or licensing practice, the most telling part of a patent's life: post-grant, is inadequately prepared during infancy. A too-small percentage of patents have the claims they deserve.

USPTO allowance rates have plummeted in the past 7 years, as boasted by Jon Dudas in his recent testimony before Congress:

At the USPTO, our objective measurements tell us that patents today are of a higher quality than they were 10, or even 5 years ago. In 2006 and 2007, the USPTO had its lowest examination error rates in the last quarter century--which is mainly due to adding significant new quality measures in recent years. By every objective measurement -- including end-of-process and in-process reviews, certification and recertification of examiners, and percentage of affirmances at the Board of Patent Appeals and Interferences --we've determined the quality of patents granted has been improving, and we expect this to continue because of current and future quality initiatives. A major concern we have at the USPTO--and it is a concern I have heard from many IP offices around the world--is the room for improvement in applications coming through our door. There has been a dramatic decrease in the allowance rate, or the percentage of patent applications that ultimately get approved. Our allowance rate has dropped from 72 percent in 2000, to 44 percent in the first quarter this year. This is due partly to our quality initiatives, but much is due to the lack of quality in many applications we receive.

Peter Zura's take on the testimony:

In other words, the PTO is retroactively accusing applicants, who filed between 2003-05, of producing "low quality" applications that forced the rejections by the PTO. Dudas is partly right. Few would deny that certain practices used 5-6 years ago would be ineffective today. If your prosecution "ammo chest" hasn't changed stock since 1996, you shouldn't be surprised if dramatically fewer applications are being allowed.

But, again, the concern here is that the PTO is implicitly equating patent "quality" with the number of rejections issued by the examining corps. This, in and of itself, is not a tenable policy. At 44%, the USPTO acceptance rate is now well below the last annual rate reported by both the EPO (56% in 2006) and the JPO (48.5% in 2006).

The USPTO is equating a decrease in allowance rate with an increase in patent quality; the mentality being that inventors are just clogging the patent office with crappy concepts.

Although the percentage of invalid patents issuing out of the PTO may decrease with an overall decrease in allowance rate, this still does not guarantee an inventor a quality patent, since examination quality is far from consistent throughout the office. Examiners are busy and undoubtedly not perfect. Although allowance rates are way down, and examiners are much tougher to persuade, patents invalid over the prior art still squeak by. And this says nothing about claim quality or coverage.

Unfortunately, applicants have no control over PTO examiners or management agenda, but they do choose their representative agent.

Prosecutors take an oath:

"I will not counsel or maintain any application or proceeding which shall appear to me to be unjust, nor will I take any action except such as I believe to be honestly debatable under the law."

"I will employ for the purpose of maintaining the causes confided to me such means only as are consistent with truth and honor and will never employ political influence nor seek to mislead the officials of the Office by any artifice or false statements of fact or law."

Yet prosecutors fight for and declare victory in garnering an invalid patent. Without speculating why, most invalid patents are avoidable.

Prosecutors should always start with a patentability search, or, for both economy and quality, call Patent Hawk. From there, draft claims accordingly to insure that valid and enforceable claims issue. It is important to try and find the best prior art before drafting the claims in an application, in order to write claims that avoid the need for amendments, and preclude doctrine of equivalents because of prosecution estoppel.

Often, an adequate patentability search is not performed before filing an application. Instead, after cursory search, prosecutors draft optimistically broad claims, fight for those claims, and jump for joy if they can slip one by the examiner, assuming that the examiner found the best prior art and never second-guessed validity. Additionally, since the prosecutor lacks a true sense of the current state of the art in the subject matter, or in aversion to appeal, unnecessary amendments are often made to overcome tricky examiner rejections, thereby creating latent estoppel, a crippling disease for a patent later in life.

While patents are ultimately legal documents, the best patents are paragons of exposition; i.e. dandy examples of readability. Well, maybe not the claims. But the figures are best if self-explanatory, and a great disclosure reads more like a grade-school primer than mystery. Using both easy-to-read and precise terms serves dual purposes of facilitating comprehension while preserving rock-solid disclosure support for claim construction as required. As to the claims, various strategies may apply - from "picture" claim to pinpoint to broad sketch. Most significantly, claims crafting depends on the shoals of prior art.

Most patents are worthless; they shouldn't be.

Patents are a communication. To get a gold standard patent, hire the best communicator you can find.


In recent testimony before Congress, Alan Kasper of AIPLA spouted composite figures for prosecution preparation and amendment -

The preparation and filing of an original application of minimal complexity (10 page specification, 10 claims) on average by a firm having my firm's size is $8,548.00. Similar costs exist for relatively complex biotechnology/chemical cases ($15,398.00), relatively complex mechanical cases ($11,482.00) and relatively complex electrical/computer cases ($13,684). The average cost for filing an Amendment in a case of minimal complexity is $2,244.00, in a relatively complex biotechnology/chemical case is ($4,448.00), in a relatively complex electrical/computer case is ($3,910.00) and in a relatively complex mechanical case is ($3,506.00)... The government fees related to such filings are the same (unless the Applicant is a small entity) -- $1,030.00. The cost for filing an RCE is $810.00 plus a service charge, which in the case of my firm, is $350.00. The cost for filing of a continuation application is $1,030.00 plus a service charge, which in the case of my firm is $585.00.

$8,500 to $15,000, with low end not even taking full advantage of 20 claims, the nominal starter claim set. If done right, a bargain. No wonder patents are referred to as the sport of kings.

But that's for starters. To shuck work, examiners declare restrictions, requiring divisionals, like alcoholics down shots. That means that any inventive idea worth anything is progenitor to a family of patents. Family planning takes time and money. While the specification may be identical, careful claims drafting to maximize coverage is crucial.

For a utility patent of any complexity beyond a better corkscrew, if your prosecutor doesn't see the potential in your patentable idea, isn't talking to you about your patent family, you are likely wasting your money.

Posted by Mr. Platinum at March 8, 2008 12:33 PM | Prosecution

Comments

In "recent testimony" before Congress, Alan Kasper of AIPLA spouted composite figures for prosecution preparation and amendment -

The "recent testimony" pdf no longer exists at this link:

http://judiciary.house.gov/media/pdfs/Kasper080227.pdf

However, it does exist elsewhere:
http://www.waltmire.com/blog/wp-content/uploads/2008/02/kasper080227.pdf

Posted by: Charlyn at November 26, 2010 10:02 AM