Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent application has been filed, a patent practitioner must also communicate effectively with the examiner assigned to review the application, weigh the costs of claim amendments with the benefits of expeditious prosecution, and understand the needs of her clients.

In large part, these considerations are influenced, not only by the aptitude or diligence of the patent practitioner, but by the unique interpretation of the claims, understanding of the Manual of Patent Examining Procedure (MPEP), and overall style of the examiner assigned to the application. The difference between broad or narrow claims, efficient or expensive prosecution, or an issued or rejected application rests on these particularities of the examiner.

Accordingly, experienced patent practitioners should, to the extent possible, understand the tendencies of the examiner, and thereby focus prosecution strategy to obtain the most valuable patent at the lowest cost to the client.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Go To Lexis →

Not a Lexis Subscriber?
Subscribe Now

Go To Bloomberg Law →

Not a Bloomberg Law Subscriber?
Subscribe Now

NOT FOR REPRINT

You Might Like