As a registered Patent Agent who recently left the USPTO, I’ve gained a storehouse of knowledge as a patent examiner that I use to help organizations obtain patents more quickly and more affordably. There are numerous ways to reduce both time and costs, but you have to know about them before you file your application.

    Here are the three practice tips to help you save time and money on your patent application:


    Practice Tip #1 : File all prior art before the 1st office action

    File all prior art known to you before the 1st Office Action – if you file after the 1st Office Action there will be an additional fee.  More importantly, patent examiners are loathe to get hit with new prior art after they have already completed their own search.  Late filed prior art does not work to your advantage with the patent examiner, trust me I used to get so frustrated when this would happen to me.


    Practice Tip #2: Get your terminology in order

    Before filing your application, review your claims to ensure that the terminology used in the claims tracks the terminology used in the specification (and I don’t mean a simple regurgitation of the claims in the Summary of the Invention).

    When a patent examiner tries to understand the invention, the first thing that he does is to try to correlate Claim terminology to elements in the Drawings.  If he can’t do so, he will next refer to the Specification.  However, if the Specification uses different terminology than the claims, the examiner may be unable to decode the meaning of the terminology in the claims.  If that happens, the examiner may reject your claims not on prior art, but just on the non supported terminology you have used in the claims.

    This result would equate to a wasted office action, the possible need to prematurely file an RCE, and increased costs.  Whoever drafts your claims can avoid this result by using terminology that is supported by the Specification at the time of filing.


    Practice Tip #3: Separate apparatus and method claims

    If time is of the essence, when filing your application with both apparatus and method claims, consider filing them in separate applications.  If the application is particularly difficult, many examiners automatically respond to apparatus and method claims by issuing what is called an Restriction Requirement, which basically accomplishes what you could do on your own ahead of time by filing separate applications.

    So, why do examiner’s issue Restriction Requirements? One reason is that by issuing a restriction requirement, the examiner will not have to act on the application for up to 5 months. This has the effect of giving the examiner time to work on easier applications until the application gets put back on his docket. For you however, these are 5 months that your application will sit in limbo and not get examined.

    Obtaining patents can be a very expensive process, both in time and money, but they don’t need to be.  If you’ve got any questions reach out to us, we’d be happy to help.


    This article was published more than 1 year ago. Some information may no longer be current.