Adjusting-For-Analysis: Using-Patent-Examiner-Clues-To-Predict-Behavior

adjustingforanalysisusingpatentexaminercluestopredictbehavior

Using a patent examiner’s clues to predict behavior is one way to adjust for analysis. In this article, we’ll explore how to use this technique, along with some of the common misconceptions. We’ll also examine limitations, such as when you might have to adjust for other factors.

Abstract

Using patent examiner clues is the best way to ensure your application gets the attention it deserves. While patent examiners are notoriously busy, they have no incentive to devote extra resources to your application. If they can’t find your patent worthy of a second glance, you’re out of luck. This is especially true if you’re filing a continuation application.

The PTO is not exactly averse to a free lunch. If your application is filed for patent protection, you may be surprised to learn that you can expect your patent to be issued in about two and a half years. Those two and a half years can be a bit of a drag if you’re a busy professional, but in the end, you’ll get a patent that is both useful and valuable. If you’re considering filing a continuation application, be sure to read up on the PTO’s patent filing policies. The rules are clear, but if you’re unsure, consult your attorney.

If you’re not enamored of the arduous task of filing a continuation application, you could always choose to file a non-prosectorial application. For many applicants, the latter option is the better choice.

Methods

Using the clues that patent examiners are familiar with to predict their behavior is a powerful new weapon in invalidating patents. However, the method is not perfect. The PTO is not always able to search for prior art, and examiners may not be familiar with the claims being made.

Several commentators have suggested that the PTO has strong incentives to approve contested patent claims. This theory is known as the “patent value” theory. The theory suggests that the applicant is trying to obtain coverage for a product or process, and the examiner is only rewarded for the final disposition of the application.

This theory also suggests that patent examiners have heavy caseloads. There is little time for the examiner to research and analyze prior art. The examiner must compare the prior art to the claims being made in the patent application. In addition, examiners must issue at least one office action. If the applicant fails to make a response to the rejection, the examiner may issue a “Final Rejection” of the application.

The PTO is notorious for high caseloads, as well as for the turnover of its examiners. The average examiner spends eighteen hours examining an application over the course of nearly two years.

Some commentators have suggested that examiners prefer continuation applications. These applications allow the applicant to revise and amend claims, which can give the examiner more information and a better opportunity to evaluate the claims. It can also allow the applicant to wait out an examiner who has quit.

The practice of continuations gives the patentee multiple opportunities to persuade the PTO to grant the claims. Nonetheless, it is worth noting that the delay associated with continuations is quite substantial.

Findings

Continuing the patent application discussion, the following chart provides an interesting look at the time spent on the issuance and prosecution of a patent. The data includes the number of issued patents, the earliest date a claim of priority was filed, and the number of other patents in the priority chain.

According to the PTO, the average time spent on a patent application is 2.47 years. This is an improvement over the 1.96 years it took in the past. A recent study compared the average time to issuance of an original patent to the time to issuance of a continuation application. The results of the study showed that the median time to issuance for a continuation application was 4.16 years. While this may seem like an overly long period of time, the benefits of a continuation application are clear. This includes the ability to refine claims without having to go through the costly and tedious process of re-filing. In addition, the PTO may be more inclined to issue a patent when an applicant has already fought the good fight.

It is no surprise that patent examiners are paid on a sliding scale, and the average salary isn’t particularly high. Despite this, the PTO has a hard time keeping pace with the workload. This is a major concern, especially since the PTO’s budget has been cut in half over the last few years. This is where the patent bounty scheme comes in. In fact, a recent study found that there are over a million patent bounty applications in existence, a number that should increase in proportion to the increased budget.

The bottom line is that the PTO spends a lot of money on a bunch of patent applications. Having a more efficient examination process is the best way to reclaim some of these lost dollars.

Limitations

Using clues that patent examiners are likely to use when deciding whether to grant a patent can help us to analyze the time that is spent prosecuting patents. However, we cannot draw a firm conclusion from these results, as many factors may influence an Examiner’s behavior. For example, Examiners’ salary is low, and high workloads are common at the PTO. Additionally, the type of technology that is involved in a patent’s claims can lead to different laches periods. Those with multiple claims are less likely to receive the attention they need, as compared to those with one or two.

Another factor that can influence Examiner’s decisions is whether or not a patent is eligible for a continuation application. Continuation applications allow applicants to dispose of their credits without as much work. This benefit is also a drawback, as the delay associated with these applications can be quite long. In addition, there are concerns that Examiners prefer continuation applications because they do not have to spend as much time on the case.