Patent Application Writing Insights

When I started writing patent applications nearly twenty five years ago, the patent examination process was different than it is now. Twenty years ago, the patent office would grant patent protection for just about any invention. Unfortunately, this is no longer the case. The pendulum has swung in the opposite direction. The biggest cause for the pendulum swing is the 2007 Supreme Court case of KSR v. Teleflex (KSR). To make a long story short, KSR made it easier for a patent examiner to combine unrelated prior-art references (usually patents or published patent applications) to reject the claims of a patent application.

If your patent application goes to a patent examiner who has been with the patent office for over seven years, your chances of getting a patent application issued are greater than if the patent application goes to a patent examiner with less than seven years of examining experience. Why? Because the more-experienced examiner was trained differently than the post-KSR patent examiner. The Patent Office is legally obligated to follow the rulings of the Supreme Court. The Patent Office has to make a subjective interpretation of the KSR ruling to train its patent examiners. Unfortunately, I believe that the Patent Office has exaggerated the intent of KSR, to the detriment of inventors.

The Patent Office is communicating by its actions that the development of technology is to move forward with large steps instead of small steps. I personally disagree with the Patent Office's "big steps" position. The whole purpose of granting patents is to generate a library of inventions that provide a reference to inventors for creating new inventions. If fewer patents are granted, there will be fewer patents in the patent library.

However, there still is hope for "small step" inventions. Even under KSR, your invention must have at least one feature that is not found in any prior-art references. If your patent application discloses the unique feature, you will probably be granted a patent.

The process of finding the unique feature starts with the patent search. The patent search provides prior-art references with devices that are similar to your invention. If your invention contains the unique feature, it will probably get patent protection. When the patent application is written, it is important to fully describe the unique feature with enough detail to prevent the examiner from making a broad rejection with some prior-art reference. This is where my extensive engineering and legal experience provide me insights that my competitors may not have.

As part of the patent application, claims are written that define the scope of the invention. When the patent application is examined, the examiner does a prior-art search for similar inventions. The examiner will review the claims to see if the claims describe any prior-art reference(s). The claims can be amended to avoid describing the prior-art reference found by the patent examiner during their patent search. The unique feature must be described with enough detail, because new material cannot be added to the specification.

The next section will describe how a patent examiner documents their opinion concerning the allowability of the claims filed in the patent application. The patent examiner's written opinion is called an office action.