If you want to know what makes for a well written patent application, it may help to understand what USPTO examiners really think. According to a 2020 survey of 850 USPTO patent examiners, helpful insights were provided on the readiness of a patent application. What was interesting to see was not only the ranking of top needs, but the deficiency in the applications reviewed. It turns out that most of the top needs also had the greatest deficiencies. This gap between what patent examiners need and what they experienced should be kept in mind when drafting utility nonprovisional patent applications.
What are patent examiners’ top needs regarding the specification?
Patent examiners apparently care the most about having the inventive concept clearly set forth in the specification. I have my own theories on why the experience rating for this factor is significantly lower than the need. It is possible and likely that the applicant does not want to limit the inventive concept(s) in the specification. Whereas examiners may prefer to see an inventive concept (singular) clearly set forth in the specification, applicants may prefer to have inventive concepts (plural) disclosed in the specification. This gives applicants more flexibility to pursue a variety of claims and opens the door for more continuing applications.
What are patent examiners’ top needs regarding claims?
Three needs rank the highest with respect to patent claims:
- manageable number of claims
- independent claims that capture the same inventive concept disclosed in specification
While clear and correct syntax and grammar appears to be a high need (8.76 out of 10), the relatively high experience rating of 5.85 resulted in a lesser gap.
I am not surprised by the need for a reasonable number of claims as this concern affirms the anectodal observations of seasoned patent practitioners. Examiners generally do not want to see a high number of claims in a nonprovisional application, especially when they are given a short time allocation to review each case. If you want to get on the negative side of a patent examiner, an excessively high number of claims will do the trick.
As far as having independent claims that capture the same inventive concept disclosed in the specification, a number of reasons can explain this gap. One possibility is that the inventive concept is not clearly understood by the examiner. The examiner may have an interpretation of the inventive concept that is faulty or different than that disclosed by the inventors. This misunderstanding may become more apparent in a Final Office Action where the examiner repeats the same rejections even after the applicant has made clarifying amendments and remarks.
Another possibility is that the applicant is seeking to claim alternatives or variations of the inventive concept (e.g., when competitors try to design around claims). The inventive concept may have several features, and the applicant is seeking to claim different combinations of features in the independent claims.
I find it interesting that IDS is even cited as a third and final category of needs. Patent prosecutors may take issue with this need for a reasonable number of references cited in an IDS. Sometimes, the number of prior art references is beyond the applicant’s control (e.g., high number of references cited in related or foreign counterpart applications). Furthermore, any reasonable applicant certainly would not want to avoid inequitable conduct due to failure to cite a relevant reference.
How ready is your patent application?
In theory, a patent application that is more “ready” should have higher patent quality. In drafting a nonprovisional application, sufficient time and care should be dedicated to writing the specification and having adequate patent drawings that clearly show features to be claimed. Whereas claims will likely be amended, perhaps repeatedly, the specification generally stays fixed. Since the initially filed specification will fix the parameters of what can be claimed as you prosecute the application, make sure your specification is sufficiently detailed.
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