What are effective patent strategies?

Getting a utility patent can be a long and expensive slog. The utility patent process is fraught with obstacles that may tempt you to feel discouraged. Don’t expect quick and easy results. Without sugarcoating the burdensome process of obtaining utility patents, let’s explore some realistic strategies that may help you get a patent granted sooner.

The time from the application filing date to the examiner’s first substantive review of your application is known as First Office Action Pendency. USPTO statistics show this average waiting period as 15.5 months (as of the date of this post). Certain examiner groups, known as art units, may take significantly longer due to the backlog of patent applications in certain technologies. To cut in front of the line, see my article on how to speed up your patent application.

What are patent strategies to shorten the time leading to examiner’s first review?

Keep in mind that queue-jumping strategies may not necessarily reduce the number of rejection letters by the patent examiner, known as Office Actions. So even though it helps to reduce the First Office Action Pendency by several months, you may need different strategies for contending with Office Action rejections.

What are patent strategies for reducing the number of patent Office Actions?

It would be safe to expect that roughly 90% of utility patent applications will receive at least one Office Action. So rather than aiming to be in the rare 10% of cases that receive a first action allowance, the wiser approach may be to focus on how to deal with the inevitable Office Actions.

One strategy is to conduct due diligence even before applying. You can search Google patents yourself. If you don’t find a close match, you can then consider a professional patentability search to identify what already exists in the prior art. Possessing this knowledge at the pre-filing stage allows your patent attorney to draft independent claims that are in a better condition to begin with. At least you will not start with independent claims that cover the prior art you already know. This pre-filing strategy might not save you from an Office Action, but it can lead to a more targeted prior art search by the Examiner which then sets the stage for a more effective response.

Talking to the Examiner often accomplishes more than what a written response can do. Your patent attorney may be able to sense any confusion or resistance in the Examiner’s tone, and gauge their feedback on proposed claim amendments. Even if the interview does not lead to an allowance (they rarely do), you will at least gain the knowledge of what will not work with this particular Examiner.

That is why I am a big fan of the First Action Interview program. A productive conversation with the Examiner at an earlier stage can save a great deal of time. In addition to clarifying any confusion or misunderstandings, your patent attorney can also discuss how proposed amendments cover features not shown in the cited prior art. The FAI program enables this conversation to take place before the Examiner issues the first Office Action. Moreover, you get a sneak peek at the prior art found by the Examiner before scheduling the interview. This enables your patent attorney to make even more progress by preparing for the Examiner interview ahead of time.

How to get a utility patent granted sooner when you still want broader claims

In an ideal world, the Examiner will allow your utility application with the broadest claims you believe are warranted in light of the prior art. Not only do we live in less than an ideal world, but the USPTO may make you feel like worst case scenarios are the norm. So if and when you do get an indication that some claims are allowable, I generally recommend taking the allowable subject matter to get the patent granted.

Instead of arguing for broader claims in the pending (parent) application, you can file a child application to pursue broader claims. That way, the grant of your patent application will not be held up.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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