PITFALLS IN US PATENT PROSECUTION – NEW PAPER BY FABRY & TOMIC
Clients have been saying for several years that it would have taken less time and money to obtain a US patent in the past. Now one could say that it is a purely subjective perception and in retrospect „the good old days“ were always better. However, the observation that US examination procedures take longer and longer and require more and more financial commitment due to endless rounds of office actions at the end of which there is always another costly „Request for Continued Examination“ (RCE) is simply correct.
The reason for this development is decisions by both the Supreme Court and the subsequent courts (Court of Appeals of the Federal Circuit, CAFC), which have increasingly found their way into examination proceedings and are now making life difficult for both applicants and lawyers.
In their latest paper, which has just been published by GRUR INT, Bernd Fabry and Jaksha C. Tomic explain the relevant decisions and their significance for the granting of US patents and give advice on how to avoid some of the pitfalls of the US examination process through strategic planning. The central element here is an analysis of how the responsible examiner has behaved in other examination procedures as well as the avoidance of non-purposeful replies to office actions through timely personal interviews with the examiner.