Patent Law

Single-Attorney Prosecution; Compact Prosecution; and the USPTO Backlog

By Dennis Crouch

The US Patent Office has long favored a 'compact prosecution' examination approach. With compact prosecution, once substantive examination begins, the Office focuses its attention on promptly conducting and concluding the examination.  By reducing the duration of substantive prosecution, it is more likely that the case will be examined by an individual examiner and less likely that the examiner will have to re-learn the technology each go-round. 

From the Patent Office perspective, the long backlog-queue does not hamper compact prosecution because substantive examination generally begins only once the patent application makes its way to the front of the backlog queue. 

The applicant perspective is somewhat different. For applicants, substantive prosecution begins with preparing the patent application and eventually continues with office action responses and potential agreement on final claim language.  I am beginning a project that looks at how the backlog impacts prosecution from the attorney side. As the first blunt analysis, I looked at the prosecution history files for 90 randomly selected recently issued patents and compared the practitioner signature of (1) the application as filed; (2) the first response to a non-final office action (if any); and (3) the issue fee transmittal.

Findings: The signing practitioner (attorney/agent) changed in 71% of the cases.  Of the cases with response to a non-final office action rejection, the practitioner that signed the application was different from the practitioner that signed the initial response 61% of the time. (+/–  11% at 95% CI).

Full post as published by Patently Obvious on September 13, 2010 (boomark / email).