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Four pieces of advice for getting patent claims through the USPTO.

Summary: After 30 years as a patent lawyer, litigating and prosecuting patents both in-house and outside, Janet Pioli, now of Brinks Gilson & Lione, has developed ...

After 30 years as a patent lawyer, litigating and prosecuting patents both in-house and outside, Janet Pioli, now of Brinks Gilson & Lione, has developed a wealth of experience. For the past eleven years, she has brought that experience to bear doing strategic planning, advising -- and periodic writing or rewriting -- of patent applications, specifically in the medical device space. During that time, she has developed strategies to successfully work with the system at the U.S. Patent and Trademark Office (USPTO) without unnecessarily narrowing claims and perhaps avoiding an appeal to the Patent Trial and Appeal Board (PTAB), though this step is sometimes necessary, as Pioli herself has over 50 appeals pending. In fact, that is her true expertise -- setting up cases for appeal, when necessary, and getting those appeals through successfully. Now, Pioli shares with us her top four tips for getting patent claims through the USPTO. Click through the slideshow to check them out.

1) Do a quick search

"My best advice," Pioli says, "is to do a quick search the minute you get invention disclosure. Pay a few hundred bucks and find relevant art. It is better to know the details of what you are dealing with up front rather than having already filed your claims and finding you now have to significantly amend because the Examiner found a prior art reference. If that reference is too close, suggest narrowing the claims or dropping the case all together. Ask if the invention is important to your client strategically. If so, work within the scope of the art and cover the potential commercial product. If not, don't waste the client's money.

2) The first office action

The next thing Pioli does is check the priority and publication dates of the cited references and whom they are assigned to. Sometimes, a cited reference is the client's and common ownership can be asserted, removing the reference as prior art (noting that the rules and applications of the rules are slightly different under pre-AIA and post-AIA). If the application is filed pre-AIA -- and the vast majority right now are -- and if the priority date is close to your filing date, there is a possibility of showing first invention. In these circumstances, diving into the substance of a reference may be unnecessary. When it is a commonly owned reference as defined by the MPEP, you avoid characterizing that reference unnecessarily. "Swearing behind" takes a little more time and thought, and must be used carefully and judiciously--though this will disappear with the last allowed or abandoned pre-AIA application.

3) Get an interview with examiner/Develop your relationship early

When you frequently work with the USPTO, Pioli notes, you get to know some patent examiners quite well. If you don't know a specific examiner, learn what you can about how they like to work. Nothing advances your cases better than an examiner who trusts you, believes you are a straight shooter, and feels you respect them. Failing to establish a good rapport with an examiner can result in a frustrating prosecution experience. Kindness, respect and honesty go a long way. One thing I learned early, if you know a reference that is better than the examiner has cited, give it to them in person or on the phone, and then put it in an information disclosure statement (IDS). It shows your integrity and it makes your application stronger by dealing with the issue up front.

Pioli suggests setting up a phone interview early, in person if possible. Nothing works as well as a face-to-face meeting, particularly if you can bring the invention or the inventor with you. Most examiners are willing to do such meetings, and while hoteling at the PTO can make scheduling meetings somewhat more difficult, Examiners are required to be at the PTO periodically. If an Examiner cannot meet in person, suggest Webex, in their Supervisor's office with the Supervisor present. You can call the Supervisory Patent Examiner (SPE) and request it: many are receptive.

Pioli has recently learned that an Examiner cannot require an agenda. If the Examiner insists that an interview will not be held without one, remind him or her that it is not a requirement; if you do submit one and the Examiner won't talk about anything that is not on it, offer that same reminder. If the examiners won't give you an interview without an agenda, you can contact their SPE. In fact, Pioli sees a lot of advantages in developing a mutually respectful relationship with art unit SPEs and contacting them when necessary. It is an action that should be used with care so as not to be seen as doing an end run around an Examiner, but in the spirit of cooperation and advancing the case to allowance. Interviewing should not be limited to one interview: dialog with the examiner should be ongoing to the extent both sides are willing.

4) Get the SPE involved

Unfortunately, sometimes nothing you do will advance a case. An Examiner will firmly resist your arguments--however persuasive you believe them to be. If you find yourself in this position, says Pioli, "... an in-person interview with the SPE, can go a long way toward moving things along. Primary examiners or those with authority may push back and refuse to get the SPE involved. In those cases, consider sending the interview request to both the SPE and the examiner." But, she adds, "Many times the SPE can see things both you and the Examiner have lost sight of. It does happen: I sometimes need a reality check too and the SPE's provide it."

Pioli happens to know most of the SPEs in the art unit she typically deals with, and this has allowed her to have frank discussions with them. Clearly, she also has had time to cultivate these relationships in the USPTO. But for attorneys who are just getting started, the message is clear: know the USPTO inside and out -- knowledge and relationships will get you where you need to go.

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Publication:Inside Counsel
Date:Oct 17, 2014
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