Patent Strategies in Light of the New Rules

The latest rules from the US Patent and Trademark Office are quite sweeping.  The new rules have several facets.  On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE).  On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.

Another twist is that the Examination Support Document may be forced where two applications are filed nearly simultaneously.  The PTO may assume that they cover the same patentable material and force an Examination Support Document unless you can prove that the applications do not cover the same material.

(As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.  The reasoning is similar to why I will not file accelerated examinations.)

Each of the various requirements put on the applicant presents several problems, including the specter of patent invalidity and possibly inequitable conduct if the various support documents and petitions are not properly done.

In some situations, I used to espouse a kitchen sink approach to patent prosecution, where you load up a patent application with as many ideas as possible, get an early filing date, and file many continuation applications as possible.  This strategy can blanket an area of technology very effectively and makes the best use of early disclosure.  The strategy also could be used to tailor claims to an infringer so that lengthy and costly court battles may be averted entirely.

In view of the new rules, I think another strategy may be better suited.

This strategy is very targeted and narrow, and looks to find specific areas that may be infringed in the future, but does not include any more than it needs.

The targeted strategy is driven from the need to avoid overlapping applications and avoid the potential that a continuation application may need to be filed.

The steps are as follows:

1.  Define a very specific strategy for patent coverage over the entire scope of the technology you wish to cover.  The strategy must be driven by the current and potential business needs of the client, as well as the possible turns a technology may take.

2.  Draft a complete set of claims for each targeted area.  Each element of the claims should be carefully and thoughtfully considered for the language, the scope of coverage, any way the claims may be construed or misconstrued, how an infringer may infringe, and for how it differentiates from the known prior art.

3.  Only after the claims are completed, analyze the claims with the inventor and the business manager, reviewing the areas described in step 2.

4.  Draft a specification that addresses each and every claim and every feature of every claim, and avoid any additional material if at all possible.  Each feature must be described completely, but avoid adding other ideas that may be patentably distinct and that you may wished were a stand-alone patent.

One interesting twist to the new rules is to attempt wherever possible to force a restriction by including patentably distinct sets of claims.  Each divisional application is a separate family of applications for the purposes of continuation applications and RCEs.

The new rules may tend to force less disclosure and much more tailored specifications that may stand or fall on the first couple Office actions, rather than specifications with all sorts of material that may keep an application alive through several continuations.  This may lead applicants to perform good searches based on the claim set of step 2 prior to drafting the specification of step 4.

The net result is a shift from large, comprehensive patents that may disclose a broad range of concepts to those which are very narrow and even skeletal.  Instead of ‘promoting the progress’ by encouraging as much disclosure as early as possible, I think the new rules encourage the exact opposite.

This discussion is by nature very broad and sweeping, but based on the strategies that the new rules seem to favor.  I am sure that many situations may cause other strategies to be used within the new rules, and I will discuss them as they come up.