USPTO Director Andrei Lancu Takes a Look at Early ProsecutionMay 24, 2018

This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent.

A new pilot program that will allow for a pre-search Examiner interview is being planned. The goal of the interview is to allow claim interpretation to happen before running any search. By clearing up confusion early, the Examiner can perform better initial searches to identify relevant prior art for fewer issues in the first Office Action. This would allow replies to be more effective toward obtaining a patent.

Examiner training was also addressed with three different areas of continual training being mentioned: legal, quality, and technology. Examiners this year have already undergone training for § 101 and are currently undergoing § 112(f) training. Later this year Examiners will receive training for §§ 102, 103, and 112(a), legal analysis and writing, unity of invention, Examiner’s answers, and double patenting. Technical training, held at the USPTO or in institutions within the U.S., will keep Examiners up-to-date in their field. The combined training should result in better written Office Actions which are more relevant, both legally and technically, to the application.

By clearing up confusion in the earliest stages and keeping Examiners current in their field, the first Office Action will be more relevant, allowing for the reply to better address rejections early in prosecution. Ultimately, this should allow faster prosecution and lower costs to clients.

Oliver P. Couture is an Intellectual Property Attorney in the Biotechnology/Chemical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Oliver directly via email at oliver.couture @ipmvs.com .

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