is a former USPTO Patent Examiner and registered US patent agent. In 2009, Paul founded The Patent Box, recognizing the need for a tool designed to help practitioners navigate the nuances of US patent prosecution. Paul holds a BS in Electrical Engineering and an MS in Computer Systems Engineering, both from Boston University.
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We need to ask ourselves: what are the defining features of a “filler patent”? At least two things stand out. First, “filler patents” go through more rounds of prosecution than other patents. Secondly, the independent claims of “filler patents” are longer (have higher word counts) than other patents… A “round of prosecution” means an Office action from the USPTO and the applicant’s response. It is typical for “filler patents” to go through multiple rounds of prosecution, such as six or more rounds. At each round of prosecution, the claims are tailored, so that the scope of protection of the resulting patent is whittled down until essentially nothing is left. Then the application is allowed to issue.