Patent prosecution can be a slow process. What can the patent agent or patent attorney do to speed up the patent prosecution process?
Patent prosecution is usually slow because of the applicant represented by the patent agent or patent attorney either does not provide information or makes it difficult for the USPTO examiner to evaluate. Many times, applicants hinder the patent prosecution process by presenting irrelevant claims, not providing documentation, miscommunication, and misuse of examiner interviews, not making the disclosure clear and understandable for the examiner or providing figures that do not clearly convey the invention.
However, there are some simple techniques to speed up patent prosecution and get your patent granted.
1. Write your disclosure so that it is clear and concise and covers what the inventor invented. A patent disclosure is a public claim of data about an invention.
2. Ensure that the disclosure defines any key terms.
3. Ensure that the disclosure states what the invention is. Many disclosures describe the invention but do not clearly state what the invention is and does. This will help the examiner search the prior art.
4. Highlight all the items numbers so it is easy for the examiner to read the disclosure.
5.Provide claims in the application which are narrow and broad. Narrow claims are easier for the examiner to allow whereas broad claims require considerable back and forth to achieve allowance. The hope is that the examiner allows the narrow claims and then you can utilize a continuation to argue the broader claim set.
6. The claims should be constructed to ensure that you make the novel and non-obvious features of your technology clear and that they have antecedent basis.
7.Ensure you have prepared a robust application. Include all the relevant documentation and any affidavits that can help make your case with the examiner. Just stating that the invention solves a problem is not as good as a customer saying the invention solved their problem.
8. You should also disclose any prior art that you are aware of. This will help build a good relationship with your examiner.
9.Clarify issues by communicating directly with the examiner. Utilize emails and telephone efficiently to clarify issues that could delay the process.
10. Do not misuse examiner interviews. Provide them a clear agenda that lays out your case and proposed amendments so they can come to the interview with information which could help clarify issues and suggest alternative claim language.
Remember that the patent examiner are in most cases on your side. The examiner wants to quickly process patent application so help them do it. The easier you make them see how the applicant invention as defined in the claims is different than the prior art the faster the allowance of the claims will occur. These strategies can help build a good relationship with the examiner.
By understanding the patent examiner’s time limitations and communicating with them effectively both in the specification, claims and interview, you can make their life easier and speed up your patent application.
Here at Stanton IP Law Firm, our attorneys and patent agents are ready to do the legwork in this process so you can focus on running your business. Call us to schedule a free consultation with one of our qualified attorneys.
Copyright © Joel Douglas 2021
