Yearly Archives: 2016

To Improve Patent Quality, Let’s Use Fees to Weed Out Weak Patents Brian J. Love Too often, proposals for improving patent quality zero in on modifications to narrow aspects of patent examination—tweaks that, at best, will only improve future applications—without considering broader reforms that can improve all patents, including those ...

Taking Functional Claiming Seriously Mark A. Lemley I have argued elsewhere that software patentees have been writing patent claims in functional terms, attempting to lay claim to not just the particular invention they developed but any code designed to solve the same problem, configured in any way and placed on ...

In Person Interview Capability with All Examiners Thomas Franklin Kilpatrick Townsend & Stockton LLP The ability to meet with your decision maker when seeking to procure or protect your property (i.e., a patent grant) is a cornerstone of procedural due process guaranteed by the Constitution. As the examining corps is ...

Designations: Roadblocks to Compact Prosecution Kate S. Gaudry Kilpatrick Townsend & Stockton LLP The patent office, applicants, and the public have a shared interest in promoting compact prosecution. Quickly and efficiently arriving at a final disposition (allowed or abandoned) would reduce the PTO’s backlog and allow applicants and the public ...

Proposal 1 Under Pillar 1: OPQA Review Richard B. Almon Kilpatrick Townsend & Stockton LLP Quality, as conceived today by the USPTO, can be assessed by the customers of the Office in different ways. Most customers agree that high quality involves ensuring that patent applications are quickly and efficiently examined ...

Regarding USPTO Proposal 2: Automated Pre-Examination Search Adam J. Gianola Kilpatrick Townsend & Stockton LLP We generally support the U.S. Patent and Trademark Office (USPTO) having a modern automated search tool to place the most relevant prior art before examiners at an early stage of examination. Such a tool may ...

Proposal: Training for Examiners on Compact Prosecution—Interview/Mediation Training Adam J. Gianola Kilpatrick Townsend & Stockton LLP To reduce prosecution time, the USPTO should offer additional training to examiners. Specifically, examiners should be offered advanced interview training and mediation training to properly prepare them to make the most effective use of ...

Pre-Search Interview Program Kate S. Gaudry Kilpatrick Townsend & Stockton LLP Compact prosecution—that is, reaching a final disposition as quickly as possible—while preserving quality of examination is a high priority for the USPTO and for applicants. Efficient prosecution requires that: • The examiner understand the invention. Accurate understanding allows the ...

Comment Regarding USPTO Proposal 3: Clarity of Record Matthew T. Kitces Kilpatrick Townsend & Stockton LLP An efficient and effective examination process is critical to enhancing patent quality in the United States Patent and Trademark Office (USPTO or PTO). Clarity of the record is necessary to ensure everyone involved, including ...

Perfect Examination The U.S. Patent Office has never aspired to provide perfect examination. Under the old law, the swearing-back of a publication issued within the pre-filing one-year grace period left unresolved whether the party originating that reference had publicly used the invention, or even published it, prior to the beginning ...