By Chris K. Miller, Principal
As a patent attorney with Harness, Dickey & Pierce, I was honored to attend and to moderate a panel of speakers at the 2018 Customer Partnership Meeting in May at the U.S. Patent and Trademark Office, which was hosted by directors and managers of Technology Centers 3600 and 3700 in conjunction with members of the American Intellectual Property Law Association. The Partnership Meeting is an opportunity to bring stakeholders together to share ideas, experiences and insights, which provide valuable training to everyone involved and enhance predictability and reliability in the U.S. patent system. Cooperation and involvement with the Patent Office through programs such as this Partnership Meeting provides unique insight and know-how that helps serve my client’s interests in both obtaining and maintaining strong patent protection for the valuable ideas that support their businesses. Arguably, strategic, high quality patent filing practices are more important now more than ever for patent applicants, owners, investors, and other stakeholders.
The focus of this year’s meeting was on prosecuting patents to withstand validity challenges and included topics such as post grant proceedings; the current climate driving patent prosecution practices; strategies in identifying prior art; claim interpretation; anticipation and obviousness; and industry and investor perspectives. I moderated the panel on patent prosecution practices, which included the Associate Commissioner for Patent Quality with the USPTO and a private practice attorney.
Interesting trends echoed through many of the presentations in light of case law developments and post-grant proceedings under the America Invents Act that have become available over the past five years, which may make some patents more difficult to obtain and subject to cancellation after issuance. In summary, to increase a patent applicant’s chances of obtaining and maintaining a valid patent, these trends suggest that patent applicants and owners should consider:
- preparing robust patent application disclosures and avoid low quality/high quantity commodity patent filing practices;
- drafting and prosecuting patent applications in a way that assists the patent examiner in applying the correct, relevant prior art; and
- developing the prosecution history appropriately during prosecution to help clarify the scope of protection of the patent.
Although some patent practitioners may find some of these trends controversial, they can be implemented strategically to take advantage of deference that the Patent Trial and Appeal Board may have toward the patent examination process to help your patents survive invalidation after issuance. Based on these trends, patent applicants and owners should be wary about spreading inventive material too thin across multiple patent filings rather than focusing on a smaller number of strategic, high quality patent filings, which may actually cost less in the long run.