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Slowing Down Patent Issuance

There are many strategies and situations where slowing down the patent from issuing is an enormous benefit to the client. Personally, I take a very proactive approach to making the patent issue as late as possible where this is needed, such as filing a provisional application. I could not bear the thought of writing a sloppy patent application or intentionally filing claims are ambiguous or need a lot of work to clean up. I think it is reprehensible to intentionally and needlessly drag out prosecution by filing endless responses to Office actions, because it lines the pockets of the attorney without benefiting the client. I do think there are legitimate, low cost mechanisms that can extend the prosecution time to help the client get the most protection for the money spent.

One of my favorite techniques is to draft several sets of claims with an eye that they will be restricted by the patent office. In general, the application will be restricted by an examiner who is just beginning the examination. Typically, the examiner will offer the applicant two or more groups of claims to pursue. One group of claims will be the one that the examiner is capable of examining right then and there, and the other groups will require that the application get back in another examiner’s queue. In order to extend the pendency, the applicant merely needs to select the other group of claims. After the first set of claims is allowed, the other set of claims can be prosecuted without losing patent term. Allegedly, the divisional applicaitons are taken up before regular applications by an Examiner, so the divisional applications may progress through the PTO more quickly than the first set of claims.

A version of this technique is to write a set of business method claims in the application. Business methods have notoriously long pendency at the patent office. By putting one set of business method claims in an application, and selecting those claims if the application is restricted, the pendency of the application will force the patent to expire an extra 3 to 10 years later than if the technique were not used. An extra 10 years of royalties may be a tremendous amount of money in some circumstances.

One thing to note is that Patent Term Extension only applies to the original application, not continuations or divisionals. This means that divisional or continuation applications would expire 20 years from the filing date of the original application. This strategy is very useful in offensive patent strategies.

This technique does not call for endless continuation applications. Although this has been discussed in various camps as a technique associated with “abuse,” I have not seen data that support the argument that changing continuation practice will have any significant effect on the backlog at the USPTO. My sense is that the “abuse” is large firms that see extended patent prosecution as a cash cow that needs to be milked, and not an enormous drain on USPTO resources.