IP in Depth

IP in Depth: Fixing the Application Backlog

Favoring the examination of either new applications or RCEs over the other does not seem like a practical or equitable solution to the backlogs.

In my March 2014 column (“Compact Prosecution,” pp. 9-10), I discussed how U.S. patent applicants resorted to filing requests for continued examination (RCE) applications as the U.S. Patent and Trademark Office (USPTO) stayed the course on compact prosecution.


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IP In Depth: The Cost of Obtaining Allowed U.S. Patents

The Patent Dashboard report of 2.5 average actions per disposal seems too good to be true.

 The U.S. Patent and Trademark Office’s (USPTO) September 7, 2010, Director’s Form: A Blog from USPTO’s Leadership addressed the then current backlog of more than 700,000 applications, efforts to reduce pendency and factors that contribute to examination delays.  


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IP in Depth: Avoiding Unnecessary Disclosures in Patent Applications

The distinction between disclosing how to practice an invention and explaining how an invention works is important to understand when drafting patent applications.

The disclosure of an invention in a patent application must meet the “enablement” provision of the U.S. Code, which states that the “specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”


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IP in Depth: The USPTO's Glossary of Terms Pilot Program

To participate in the pilot program, applications must include a glossary of terms at the time of filing.

On March 26 the U.S. Patent and Trademark Office (USPTO) announced that it will launch a new Glossary Pilot Program in which expedited processing of patent applications will be offered to applications that include a glossary of terms that defines the terms used in patent claims.


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IP in Depth: Effective Preissuance Submissions

Preissuance submissions are an opportunity to present prior art in such a way that a patent examiner will be convinced to apply the prior art to reject pending claims.

“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” says Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos.


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IP in Depth: What Happens to Abandoned Patent Applications?

Roughly 85% of all new patent applications are rejected in first Office actions.

Whether the process is performed by an independent inventor or a corporate entity that regularly files U.S. patent applications, having a patent application(s) drafted, filed, and prosecuted involves a substantial investment in invention development time and costs, as well as legal expenses. An additional emotional investment is often based on the hope that pursuing and protecting the invention(s) will result in financial rewards.


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