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by James Kramer Director Technology Center 2800

The Examination Process From Filing to Disposition for The National Association of Patent Practitioners July 2014. by James Kramer Director Technology Center 2800. Examiner Training. New Hires O nboarding Phase 1: Patent Training Academy Phase 2: in the Technology Center Ongoing Training

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by James Kramer Director Technology Center 2800

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  1. The Examination Process From Filing to DispositionforThe National Association of Patent PractitionersJuly 2014 by James Kramer Director Technology Center 2800

  2. Examiner Training • New Hires Onboarding • Phase 1: Patent Training Academy • Phase 2: in the Technology Center • Ongoing Training • Primary – Junior Examiner Mentorship • Technical Training • Legal Refresher Training • Certification Examination • Signatory Authority Program

  3. Day in the Life of an Examiner • Quality • USPTO Strategic Goal: Optimize Patent Quality • Committed to ensuring the highest quality patents • Production and the Count System • Examiners earn credits for taking actions in applications • Achieved Production is a percentage of the number of credits earned versus the number expected to be earned in a timeframe • Expectation is determined by complexity of the technology and grade level/seniority of an examiner • Workflow • Manage flow of patent applications through examination in accordance with Office Policy and prescribed time periods • Stakeholder Responsiveness • Customer Service

  4. Tips to Help Expedite Prosecution 1. Interviews - look for opportunities to identify allowable subject matter Examiners are being encouraged to be proactive in identifying allowable subject matter in the application and to initiate interviews with applicants The USPTO is using WebEx to conduct web conferences with external stakeholders. Instructions on how to join a USPTO hosted web conference as well as useful information and links on how to use WebEx collaboration tools including audio/video conferencing and file sharing are provided at http://www.uspto.gov/patents/resources/web_conferencing.jsp

  5. Tips to Help Expedite Prosecution 2. Avoid overly broad claims and a reluctance to narrow the claim language • Be aware that “testing the market” by filing multiple RCEs significantly slows prosecution 3. Submit a manageable number of claims 4. Make sure claims, drawings, and specification are each clear and complete

  6. 5. Consider the search and prior art applied in your foreign application when you file or amend your U.S. application USPTO data shows that applications participating in the Patent Prosecution Highway (PPH) have a higher allowance rate and shorter prosecution history because the U.S. applications are drafted or amended in response to search reports and patentability opinions from corresponding foreign or international applications. 6. Provide all pertinent arguments early in prosecution Arguments and amendments filed after the final rejection are not considered by right and extend prosecution Tips to Help Expedite Prosecution

  7. THANK YOU

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