By David Miller

Have you heard the joke about patent prosecution being like a taxi ride? According to the punchline, you don’t know what the ride will cost until it is over. There is an element of truth to this because you can’t predict how the USPTO examiner will react to your claims or arguments. Let’s discuss a few strategies to improve the predictability of examination, and contribute to faster examinations and higher allowance rates.

This blog post is too short to discuss solutions for every issue that you may encounter; you may already use similar tactics for your clients. Consider using Global Patent Solutions as a resource; we can help you with custom solutions for any challenges in the patent lifecycle.

Strategies Before Filing the Patent Application:

Most patent practitioners overlook strategic opportunities that can only occur before submitting the patent application. Specifically, a thorough practitioner should identify the most advantageous art unit for the subject matter and draft the claims accordingly. This simple step is often skipped in favor of relying solely upon intuition; the feeling of unpredictability comes when the USPTO examines the application differently than the attorney intuited.

There are two general objectives in this strategy. First, drafting into the best art unit puts your technology in front of an examiner suited to the particular technology. Second, drafting into high-allowance art units is more likely to be cheaper and faster.

Drafting into the best art unit

The Art Unit is the USPTO’s smallest division. It is responsible for examining specific subject matter defined according to USPC. Up-to-date concordances are available on the USPTO website at “Classes Arranged by Art Unit” and “Classes Arranged Numerically with Art Unit”. Upon intake of a patent application, the “most comprehensive claim” is used to determine a primary classification in USPC and placed within the corresponding art unit. MPEP 903.07, 903.08(E).

Classification locations of US prior art patents are generally controlling. If two independent claims are equally comprehensive but drawn to different patent classes, there is a hierarchy for determining the best class among the two:

– Process of using product 2
– Product of manufacture
– Process of making product 2
– Apparatus to perform process 3 or to make product 2
– Materials used in process 3 to make product 2

It is interesting to note that USPC is no longer used for classification of published patent documents; USPC lingers in use because the USPTO has not yet modernized its application distribution software. GPS includes USPC classification suggestions as part of every patentability search so that patent drafters can anticipate the application’s route through the USPTO.

If you are drafting an application that could claim more than one of a process, product, apparatus, or material, it is important to consider that the different categories may be split among several art units. Here is a silly example: a gingerbread-man-making machine would be classified in USPC 99 Foods and beverages: apparatus but the gingerbread man himself is in USPC 426 FOOD OR EDIBLE MATERIAL.

Imagine that your client invented the gingerbread-man-making machine. How you draft the claims will have a huge impact on the application classification and placement. If the claims are too broad, the application may be placed in an art unit that doesn’t correspond to the real invention. Would an examiner in Edible Materials be competent to examine an apparatus claim?

You can avoid this situation by ensuring that a single “most comprehensive claim” is included for the desired invention. The comprehensive claim should cover the entire invention. If you want to end up in a specific art unit, you should draft the most comprehensive claim to include every element listed in the class/subclass description.

There is no guarantee that your application will end up exactly where you want it, but you can regain the feeling of control and predictability because in most cases you can draft into a desirable art unit. Our clients have indicated that that this approach works very well for prosecution of multiple similar inventions.

Drafting into the highest allowance art unit

On a different level, your client may want to pursue a fast allowance in a liberal art unit or avoid a zero-allowance art unit. Both of these unicorns exist, and the disparity is striking. Using a pay database, I learned that Art Unit 2827 has the highest allowance rate at the USPTO of 95%, for information storage/retrieval. On the other extreme, Art Unit 3689 the lowest allowance rate at the USPTO of 5%, for financial business methods! I suspect that these statistics will heavily influence your counsel to inventors of business methods.
We should point out that high-allowance is not a proxy for high-quality. The USPTO tracks the allowance rate concurrent to quality data, so I don’t believe that practitioners or inventors should be ashamed in pursuing higher allowance rates.

The allowance rate in most cases is not so different when a single technology is split between multiple art units. You can expect allowance rates to differ from 5% to 20%. For instance, Art Units 3672, 3674, 3676, and 3678 have allowance rates between 70% and 90%, all within the narrow field of earth boring technologies.
Is it worth you time to draft the claims into a higher-allowance art unit? The easy answer is yes—by mindfully drafting a few claims you can improve the allowance rate by a huge margin. The harder answer is that it depends; there are many factors to consider including your client’s budget and the underlying subject matter. In any case, you can’t know if it is worth your time until you look. The process will always feel unpredictable if you sit back and wait for the first office action.

Unfortunately, analytics tools of this nature are not cheap or free. Your only options are to subscribe to a database or use GPS as a solutions vendor. The benefit of hiring GPS is that we spread the expense of the subscription across thousands of clients.

Conclusion: Minimal Research Produces Large Benefits

The steps that I outlined here can be summed up in a four-part process. If you apply these principles as part of your preparation and drafting, you will experience more control over the final disposition of your patent applications.

– Outline elements of the invention
– Determine suitable USPC classes
– Consider using GPS
– Correlate USPC classes to advantageous USPTO art units
– Draft one “most comprehensive claim”