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Dennis Parad

Patent Attorney, Womble Bond Dickinson

Dennis Parad is a registered patent attorney and former patent examiner focusing his practice on patent prosecution and technology transfer, primarily in life sciences. He has more than 15 years of intellectual property experience covering a wide range of biotechnology and chemical practice areas in the life sciences industry. Dennis practices in Womble Bond Dickinson’s Boston office.

Recent Articles by Dennis Parad

After Final Consideration Pilot 2.0: A Patent Examiner’s Perspective

When the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”) first launched in May of 2013, the program was lauded by both patent practitioners and USPTO officials as an effective tool to reduce pendency by advancing prosecution while reducing the number of Requests for Continued Examination (RCE’s). Since then, the USPTO has renewed the program multiple times and is still active. Essentially, the program provides another bite of the apple for the applicant by giving some time for the patent examiner to consider additional claim amendments after prosecution has closed without charging the applicant any additional fees. However, many patent practitioners today are finding little value in the program. Is AFCP 2.0 beneficial for advancing prosecution without filing an RCE? As a former primary examiner with ten years at the USPTO, I have a unique insight into the program and how it should be properly utilized.

Tips From a Former Examiner: Pre-Appeal Brief Review

After two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.

Tips from a Former Examiner on How to Conduct Interviews at the USPTO

The “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner. Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?