When I started writing patent applications nearly twenty one years ago, the patent examination process was different than it is now. Twenty years ago, the patent office would grant patent protection for just about any invention. Unfortunately, this is no longer the case. The pendulum has swung in the opposite direction. The biggest cause for the pendulum swing is the 2007 Supreme Court case of KSR v. Teleflex (KSR). To make a long story short, KSR made it easier for a patent examiner to combine unrelated prior-art references (usually patents or published patent applications) to reject the claims of a patent application.
If your patent application goes to a patent examiner who has been with the patent office for over seven years, your chances of getting a patent application issued are greater than if the patent application goes to a patent examiner with less than seven years of examining experience. Why? Because the more-experienced examiner was trained differently than the post-KSR patent examiner. The Patent Office is legally obligated to follow the rulings of the Supreme Court. The Patent Office has to make a subjective interpretation of the KSR ruling to train its patent examiners. Unfortunately, I believe that the Patent Office has exaggerated the intent of KSR, to the detriment of inventors.
The Patent Office is communicating by its actions that the development of technology is to move forward with large steps instead of small steps. I personally disagree with the Patent Office’s “big steps” position. The whole purpose of granting patents is to generate a library of inventions that provide a reference to inventors for creating new inventions. If fewer patents are granted, there will be fewer patents in the patent library.
However, there still is hope for “small step” inventions. Even under KSR, your invention must have at least one feature that is not found in any prior-art references. If your patent application discloses the unique feature, you will probably be granted a patent.
The process of finding the unique feature starts with the patent search. The patent search provides prior-art references with devices that are similar to your invention. If your invention contains the unique feature, it will probably get patent protection. When the patent application is written, it is important to fully describe the unique feature with enough detail to prevent the examiner from making a broad rejection with some prior-art reference. This is where my extensive engineering and legal experience provide me insights that my competitors may not have.
As part of the patent application, claims are written that define the scope of the invention. When the patent application is examined, the examiner does a prior-art search for similar inventions. The examiner will review the claims to see if the claims describe any prior-art reference(s). The claims can be amended to avoid describing the prior-art reference found by the patent examiner during their patent search. The unique feature must be described with enough detail, because new material cannot be added to the specification.
The next section will describe how a patent examiner documents their opinion concerning the allowability of the claims filed in the patent application. The patent examiner’s written opinion is called an office action.
Once a patent application is written and filed, it will be examined within one to three years by a patent examiner. On average, it takes one-and-one half to two years to receive a first office action from the Patent Office. The wait for patent examination can be reduced by paying an additional fee of $1,035 (“micro” entity) or $2,070 (“small” entity). If one of the inventors is 65 years of age or older, a petition to “make special for age” may be filed, to decrease the wait. The wait time will be reduced to no more than six months. I have received office actions in as few as two months, by paying the additional fee.
There are three requirements for patentability—usefulness, novelty, and nonobviousness. Inventions are useful, if they have a functional purpose. There are two types of substantive rejections in an office action: a lack of novelty (“102 rejection”) and a lack of nonobviousness (“103 rejection”). The 102 rejection may be made with a single prior-art reference. The 103 rejection is usually done by combining at least two prior-art references. In a 102 rejection, the prior-art reference must include every limitation recited in the claim. In a 103 rejection, the combination of the at least two prior-art references must include every limitation recited in the claim.
The office action will include a disposition of all the claims. All the claims may be rejected, all the claims may be allowed, or some of the claims may be rejected and some of claims allowed. Additionally, dependent claims may be objected to. Adding an objected-to claim to an independent claim will make the independent claim allowable. Recently, 85% of the time, all the claims in the patent application are rejected in the first office action.
The 102 or 103 rejections are usually overcome by more precisely defining a limitation or element in the claim. The patent examiner will take the broadest possible interpretation of a prior-art reference. More precisely defining an element in the claim forces the examiner to withdraw the 102 or 103 rejection. However, any time the claim is narrowed by more precisely defining a limitation or element, the claim becomes less broad. The claim should be as broad as possible to prevent a potential infringer from designing their product around the claim. A “knock-off” product will infringe an independent claim if it includes every limitation found in the claim. However, a “knock-off” product will avoid infringement of the claim, if it has one fewer limitation or element. This is the importance of not narrowing the claim too much, to avoid the prior-art reference.
Going back to the previous article, if the patent attorney does not put enough detail into the specification, the patent attorney will not be able to amend the claim to avoid the prior-art reference. Claims may be changed if supported by the specification, but no new matter may be entered into the specification after it is filed.
The attorney does have the opportunity to contact the examiner with questions concerning the office action. Unlike many of my competitors, I will present proposed amended claims to the patent examiner, to save the client time and money. It is better to get feedback from the patent examiner than to assume that the amended claims overcome the cited prior-art reference(s). The patent examiner will provide a verbal opinion as to whether the proposed claims overcome the prior-art reference(s). If the claims do not overcome the prior-art reference(s), the patent examiner may make suggestions for amending the claims to overcome the prior-art reference(s). Sometimes, the patent examiner will let the patent attorney know that there is other prior-art not cited in the office action, but which they will use against the proposed claims. Typically, the examiner will perform another patent search relative to the newly amended claims.
An amendment contains the amended claims and arguments in support of the amended claims, relative to the prior-art references. The examiner will decide if the amended claims are allowable, relative to the prior-art references. If all the claims are allowable, a notice of allowance will be issued. If even one claim is not allowed, the examiner will issue a second office action. If it is a matter of only one or two claims not being allowed, the patent examiner will typically call the patent attorney to amend or cancel the non-allowable claim. If the patent attorney thinks the examiner is wrong in their rejections, a “supervisor’s appeal” may be filed, or a full-fledged appeal may be filed. The supervisor’s appeal will take about three months. The full-fledged appeal will take about three to four years. In response to the notice of allowance, the patent attorney will pay the issue fee and file issuance paperwork. A patent will issue in one to two months, after payment of the issue fee.