Yearly Archives: 2016

We greatly appreciate the USPTO’s outreach to the community in its efforts to enhance patent quality. We write in response to the USPTO’s requests for comments on enhancing patent quality. As academics who research and teach in the area of patents, we commend the USPTO on attempting to improve its ...

C. Wook Pak and Mark D. Nielsen The compact prosecution model has yet to be achieved because examiners, desiring to dispose of an application quickly, tend to give unreasonably broad interpretations to the claim terms in order to allow them to quickly find a reference that can serve as a ...

April 27, 2015 I appreciate the opportunity to submit comments for improving patent quality. The following comments address issues specifically regarding patent drawings. The United States Patent & Trademark Office (USPTO) rules and regulations for patent drawings are at times confusing, and in some instances vague. However, they still have ...

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 ...