A Coin Flip?

by Ryan P. O'Connor

Statisticians and gamblers alike often refer to a “coin flip” when the chances of a certain event are about 50%. Of course the actual flipping of a coin in an attempt to land heads or tails is one such event. Many everyday things also tend to be characterized by even odds.

The chances of obtaining a patent for an invention at the USPTO is historically about 50%. Patent allowance rate is the percentage of applications actually reviewed by examiners that are approved. Is the prosecution of a patent application before the USPTO so unpredictable, that inventors can never know whether they will receive an issued patent? Is even odds really the situation at the Patent Office?

We at O’Connor & Company do not believe that the process of prosecuting a patent application before the USPTO is a series of random events. It is true that the USPTO is trying to improve patent quality with stricter standards. Furthermore, one can never guarantee that a patent will ever be granted, due to unpredictability with particular Patent Examiners. However, to increase chances of obtaining a patent for an invention — beyond a coin flip (50%) — inventors and patent counsel can follow these guidelines.

Specify. Start with a good description of the invention from the inventors and others associated with the development, if appropriate. If the application is a national phase of a PCT application, or a continuation/divisional of a parent U.S. case, clearly specify what subject matter is being pursued (claimed) in the new patent application.

Search. While there is generally no requirement that an art search be conducted for a U.S. patent application, a good search of global patents, published patent applications, the literature, and the internet can really help improve chances of allowance. By finding the same art that the Examiner will likely find, you can play offense rather than defense by drafting claims around prior art. Also, arguments as to why claims are novel and non-obvious over certain references will be ready, to overcome claim rejections later.

Investigate. Review and learn from the prosecution histories for publicly available (online) patent applications and issued patents for the same Examiner. You can also try to conduct intelligence-gathering through online forums that discuss experiences with specific Examiners. Similarly, study recent experiences of applicants at the Art Unit examining your application.

Communicate. Use telephone or in-person interviews with the Examiner when necessary to advance prosecution and better understand the position of the Examiner and the Patent Office. In general, try to get the Examiner on your side; human nature can come into play. Communicate with respect.

Support. Give the patent application the attention it deserves. Don’t wait for deadlines for responses to Office Actions. Also, it is good practice that inventors and/or applicants review draft responses before filing with the USPTO.

Follow these five guidelines to “beat the odds” of obtaining a U.S. patent!