Posts Tagged: "request for continued examination"

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

At lunch Director Kappos explained that the goal for fiscal year 2010, which ended on September 30, 2010, was to get the backlog down to 699,000 — dubbed “project 699.” The Office was not successful, but Kappos says they will get well below 700,000 for fiscal year 2011, perhaps as low as a backlog of 650,000. Kappos’ immediate follow-up: “I say that as Commissioner Stoll starts to choke at me saying that.” Indeed, there are ambitious goals at the USPTO for FY 2011, including a move to unity of invention.

This strategy is tried and true, and any company with a serious patent portfolio and an eye toward enforcing that portfolio through licensing or litigation has followed this strategy. What you do is look at what your competitors are doing, or what that big target prospective licensee is doing, and you write a claim that exactly covers what they are doing. Then you add that specific claim to your continuation. As long as your original disclosure supports that claim you are entitled to add the claim. So if you are a serious inventor, a would-be patent troll or a business of any size with designs on licensing or litigating, you absolutely cannot cut corners at the time of filing the first, foundational patent application. You want the kitchen sink in that first patent application because if the path proves commercially viable you will want to milk the disclosure for many patents, and you will want to be able to argue convincingly that whatever claims you add later are actually covered by your initial patent application.

Hopefully the seemingly modest successes of team Kappos in fiscal 2010 will be viewed for what they are, which is rather extraordinary, by our leaders in Washington, DC. With all the odds against them, having to fight daily for adequate funding, fewer patent examiners and a Congress that STILL siphons money paid by innovators away from the Patent Office, team Kappos was still able to increase allowances by 5.3% and dent the backlog. Can you imagine what they could do with adequate funding?