Targeting Different Examining Groups

A still more sophisticated aspect of target claiming is the filing of multiple applications designed to target different examining groups. The fact is that some examining groups have more manageable workloads than others, and some examiners are more willing to follow the law than others. It is just incredibly frustrating to have an application land in the lap of an examiner who is completely overwhelmed with work, and who keeps rejecting the claims for no good reason.

One way to deal with that problem is to write up the invention in several different claim sets, and then distribute the various claim sets among multiple applications. If this is done correctly, the different applications will be assigned to different examining groups and different attorneys. I used that strategy successfully about a year ago. I filed three different applications on different aspects of the same general subject matter, and the patent office assigned those applications to three different examining groups. Two of the groups were quite backed up, but the third group was relatively current. The application to that third group sailed through in good time.

In that particular case the invention concerned the use of Internet Protocol (IP) for directly addressing different memory blocks. Although the subject matter could have been split up in various other ways, I drafted one application primarily to improvements in the protocol, another primarily to memory devices per se, and another primarily to communications between devices in a manner that obviates the need for operating systems.

A corresponding strategy can be used in a single application. In that strategy a patent attorney intentionally files multiple claim sets directed to different inventions in a single application. If the patent office issues a restriction requirement, the child applications will likely go to different examiners, and the applicant can then focus on one or another of the different applications depending on his experience (good or bad) with particular examiners. Some examiners are just intractable, and seem to think it is their God given duty to deny all applications. Other examiners are entirely reasonable, and appreciate that allowable claims should be allowed. Obviously, a patent attorney wants to push his patent applications to the reasonable examiners.