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April 15, 2008

Comments

Do you know how they will pick which applications are used in this program? Do you have to petition to have your application examined in this manner?

Joe:

An application must satisfy the requirements set forth on the FAI website (see link in post) and the applicant must file a request for FAI (http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/fai_request_form.pdf). According to the request, it looks like applications that satisfy the above eligibility requirements, have 3 or fewer independent claims, 20 or fewer total claims, and no multiple dependent claims will qualify.

Don

Once again, PTO management manages to take a good idea that the patent bar has been asking for for years, and then implement it in a way that strips out the major value, and focuses resources on the least valuable applications.

The Notice states that a pre-exam interview is only available for applications with no more than 3 independent claims and 20 total claims. Why limit it this way?

There is a simple fact of patent economic life that (apparently) no one at the PTO gets. Big applications (many claims, large spec, many references) get that way for only one reason: the applicant invested a lot of money in this application to get it claimed thoroughly, described thoroughly, and prior-art-searched thoroughly BECAUSE IT'S A VALUABLE APPLICATION DIRECTED TO AN IMPORTANT INVENTION. Big applications are not acts of aggression against the PTO, they are the applications that give the public the most benefit of the patent bargain. The PTO gets proportionally much higher fees for big applications (because many more big applications generate full maintenance fee income). Big applications should receive proportionally *more* time per claim, not less.

Big applications are almost always the ones that are most at the cutting edge, and where the examiner is most likely to not appreciate the claims or the disclosure without some hand-holding from the applicant. Big applications are the ones with the most complexity that could most benefit from some back-and-forth discussion with the applicant.

Limiting pre exam interviews to only the *least* important applications (that is, 3/20) is another example of PTO management's misallocation of resources because of PTO management's lack of "professional background and experience in patent law" and lack of understanding of the economics of patents. Big applications are the ones where a little education of the examiner before examination will pay the most benefit in efficiency, by helping the examiner understand the unfamiliar language in the claims, and focus on the key feature. An interview is also the single best way I know of to help the examiner get it right the first time. It's the only efficient way I know of to give the examiner the precise information he/she needs to do a quality job efficiently. Waiting until after the first Action (which, in 3620/3690, 70% of the time reflect complete lack of understanding by the examiner of basic terms of art and the like) to get the examiner focused is a waste for all concerned.

"Focused examination" is incredibly important to everyone, especially those applicants with important inventions. Why does PTO management take every opportunity to avoid it?

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