If you knew your assigned USPTO examiner was going to procrastinate on your application, how would it impact your prosecution strategy?

To craft an unbeatable prosecution strategy, patent attorneys should rely on the multi-dimensional analysis of an examiner’s data, rather than just summary metrics.

It may be hard to believe, but the first half of 2021 is now behind us, and there is reason to believe things are looking up. The effects of the pandemic have eased considerably, the labor market recovery is accelerating, and, in many states and cities, life is starting to look normal again.

The United States Patent and Trademark Office (USPTO) recently announced plans to hire hundreds of patent examiners in the coming months. The new positions will be in the biomedical, computer, electrical, and mechanical engineering technology sectors.

To succeed in any industry, a certain amount of foresight and planning is key. For patent attorneys, identifying and taking action on high-cost prosecution can lessen the usual timeline and save money in the long term.

Patent prosecution is expensive and complex. And often, each individual practitioner has their own unique approach to reach that all-important NOA. But inconsistent practices and reliance solely on past experience can lead to inflated costs.

Contemplating an interview at the USPTO? Our analysis found that nearly 95% of examiners are more likely to allow an application when an interview is part of the prosecution.

Receiving a rejection for a patent application is no one’s idea of a good time. After spending hours on hours shaping a patent application that is focused, novel, and specific, you are told to reconsider your hard work and have another go at it.

The USPTO recently hosted a webinar about the general approach to interpreting claims and how the specification interacts with and modifies those claims. With the goal of providing answers to common examiner questions, the webinar specifically discussed the importance of the broadest reasonable interpretation (BRI) of each claim, how to handle claim limitations, and the added difficulty of limitations related to 35 USC 112(f) (aka “Means-or-Step-Plus-Function” Limitations). The hope is to create consistent examination guidance that ensures all claims will be interpreted similarly by anyone of ordinary skill in the art. 

United Technologies, an American multinational conglomerate, recently agreed to combine its aerospace business with military contractor Raytheon, creating a new manufacturing giant in the aerospace and defense sectors. Under the new name of Raytheon Technologies, the merged company would have about $74 billion in expected sales for 2019.