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Stop Forcing Engineers
to Write Essays
The format for PTO office actions is the worst possible for examiners; the fact that all of the sections of the MPEP end with exemplary sentences and paragraphs having the exact words for the examiner to use indicates just how ill-suited the format is. There should be a minimum of writing sentences and paragraphs involved (for the examiner), by doing the following:
- 1st OA like the PCT ISR (search report): except far more detailed. The format should be a chart of claim elements where the Examiner fills in the references (with specific line cites) that teach each element. Either a brief paragraph, or, even better, a check box list of reasons motivating the various combinations for obviousness. A primary, secondary, and perhaps even tertiary combination of references will be identified by the Examiner for obviousness, but s/he need not identify or refer to all of the possible combinations of prior art.
- This will mean patent prosecutors will have a lot more work to do. On balance, making the Patent Office more efficient trumps that concern. In order to make this work, we'll need:
- Claim element breakdown and identification. Applicants will have to submit each patent claim with its constituent elements clearly demarcated and identified. Preferably the format should look exactly like what the Examiner will fill out in the 1st OA, i.e., a table with a box for each claim element on the left side and a blank for the references to be filled in on the right side. Moreover, each claim element should be labelled just like claims are, first with small letters, then sub-elements with numbers, etc.: for example, claim 1 has 4 elements--1a, 1b, 1c, 1d; but if 1c has 2 sub-elements: 1c(1), 1c(2). Both examiner and prosecutor will refer to claim elements by these identifiers.
- Make changes visually, rather than textually. If the Examiner agrees with the applicant that a previously cited reference does not teach this or that claim element, the reference is struck through in the box next to that claim element. Where the Examiner does not agree, s/he can briefly state why next to the reference in the table. Obviously, one or more pages of text can be added for more detailed rebuttals and for discussions of the motivation to combine references for obviousness.
- Claim Map. Applicants should submit a one page diagram showing the relationships between independent and dependent claims. For example, if Claims 2 and 3 depend from Claim 1, and Claim 4 depends from Claim 3, the diagram would have a square box for Claim 1 (square representing an independent claim), which has two separate lines to two separate circles for Claims 2 and 3, and Claim 3 will have a line to the circle for Claim 4. At every stage when relationships change, a new map must be submitted.
- Abstract and claims should refer to drawings. Once again, using the PCT model, the abstract should cite the numerals in the representative drawing corresponding to each element. So should the claims. This will save the Examiners a lot of time.
Concentrate on Providing
a Complete and Accurate
Prosecution Record
Just as much as generating rejections/allowances and increasing throughput, the Patent Office should focus on creating the best possible public record of what invention is claimed as a result of the interaction between examiner and applicant:
- Demand more information from the applicant. Examiners should use their power to demand information from the applicant much more freely. In that vein, Examiners should get credit (or points or whatever) for issuing an office action with only questions and demands for more background.
- More flexibility in modifying the patent application. The lock-step rejection of "new" subject matter should be eased somewhat, and appropriate material added to the background section as the Examiner sees fit. Although more stringently, material should be added to the detailed disclosure as well. In general, modifying the specification should be more flexible so that it reflects some of the interaction between applicant and Examiner (and the final form of the claims).
- Claim word check against the spec. At least before issuing a notice of allowance, the terms in the claims should be checked against the specification to see if they are discussed/mentioned, because sometimes they aren't. This may or may not be a grounds for a new subject matter rejection, but I would propose merely pointing it out to the applicant and letting the applicant respond and/or suggest an action before doing anything about it.
- Final claim check against abstract and summary. When the claims are in condition for allowance, they should be checked against the abstract and the summary of the invention. Almost always, the abstract and summary reflect what the applicant originally wanted to claim, and not what the claims were whittled down to. Prosecutors really won't like this, but, depending on the why and how's of the differences, the abstract should be re-written to reflect the scope of the claimed invention(s), and notes should be added to the summary, as well as a description matching the actual independent claims about to issue. Of course, the applicant is free to keep all of the language the same in any continuations, divisionals, etc. But those paragraphs in the patent-about-to-issue's summary which describe a broader invention than what is claimed in the patent-about-to-issuemust either be deleted or a note added thereto indicating the issued claim scope is narrower than this description. If desired, the note may cite to the continuation, etc., where the same or different scope invention is being sought.
Use Computer Technology to Make
More Efficient and Much Easier-to-Use
Prosecution Files
The "computer" prosecution files maintained by the PTO are still essentially paper, by which I mean scanned-in PDFs of paper documents (or created using some kind of print-to-PDF function). Maintaining a paper document paradigm within a computer framework is an extremely inefficient use of computing resources, and the PTO should use the power of computer technology to make truly computer-based prosecution records which are easier to understand, manage, and store.
- All submissions should be computer text files, or, more exactly, XML files (which can be easily generated by MS Word, WordPerfect, and even simpler text editing programs). Of course, for a transitional period, the PTO should allow scanned-in PDFs to be submitted--at $500 a pop.
- Let hyperlinks be used everywhere. Between the numerals in the drawings and the numerals in the text, ... and the abstract, ... and the claims. Hyperlinks to the prior art cites in both office actions and responses/amds. Hyperlinks connecting the changes in an amendment to the applicant's remarks concerning those changes. Hyperlinks connecting arguments to responses. Of course, a user-friendly simple GUI will be needed for the quick and efficient generation of hyperlinks.
- Let there be nice easy-to-use visuals to show what happened. You would look at a prosecution history (even an on-going one) through a web browser (preferably). You would see a chronological table of events with hyperlinks to jump to any of them (to them, right in your browser, not downloading a PDF like now). If you wanted to see the current claims, you would be shown the current version of the claim map I suggest above, where you can click on any circle or box representing a claim to jump to that claim in its current form. But, while viewing the claim in its current form is the default, you should be able to change the view with simple buttons to show how the claim has changed over time, where each change is clickable to jump to the applicant's discussion of the change. Of course, you can scroll up or down to see preceding and succeeding claims (just like on paper). Or reduce the text size to see many claims at once. Likewise, the default claim map will be the current one, but you would be able to change the view to see how and when claims were deleted and/or added, etc. (and clicking on claims within those old maps would jump to the corresponding old version of that claim). Moreover, the claim map would have special summary views, such as showing all of the prior art cited in a particular office action next to each claim the art was cited against. Of course, if you want to browse through the history as if it were paper, you could do so as well (and print it as such), and many probably will, which is fine. But the power of visualizing all of the changes to a claim and/or entire patent from one screen will win, eventually. And the fact that storing everything in XML will shrink PTO's computer storage requirements at least a hundredfold.
- This may sound complicated, but it's do-able (and been do-able for years and years and years). The trick will be concentrating on making the interface as intuitive and user-friendly as possible. And I don't particularly trust the PTO on that, so it should be developed with examiners and prosecutors involved from the very beginning, and have a public beta version where things can still be changed drastically if it's clear they need to be.
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