Incorporate Classification Definitions To Achieve Fast Allowance

It happens far too often nowadays that a patent application becomes lost in a patent group with very long average time to issuance. Many examining groups have delays of two to four years before issuing the first office action, and many groups currently have delays of four to seven years. One can try to circumvent such delays using the PCT First strategy outlined above, by naming the EPO as the searching service in PCT applications, by filing petitions to make special, and by filing early in EPO, Japan, Australia, and other countries that will conduct their own comprehensive searches. But sometimes all of that is still to no avail. Yes, the PCT will issue a Search Report/Written Opinion by the 9th month (where no priority is claimed) or by the 15th month (if priority is claimed), but all too often paper is poorly researched and poorly written. The EPO and other countries usually do an excellent job of searching, but they too get backlogged, and their patentability standards are often different from the U.S. in the critical fields of biotechnology, software, and business methods. Petitions to make special should be effective, but the office of petitions won't act on a petition until the case is assigned to an examiner, and in examining groups that are swamped, we have experienced delays of more than three years before a petition to make special is even considered!

One solution is to file multiple applications targeted to different examining groups. The basic Zetera™ technology on using Internet Protocol (IP) to access partitions of disk drives, for example, were filed as three separate applications addressing three different aspects of the technology . One patent was directed towards communication protocols, systems and methods, the second was directed towards the IP accessible partitions, and the third was directed towards electrical devices with improved communication. The strategy was successful in directing the different applications to three different examining groups, but unfortunately all three groups were swamped.

We have now developed an even more sophisticated filing strategy, which places applications in examining groups with fast application-to-issue times. The strategy is as follows.

• First one identifies examining groups in quasi-related technology areas, into which a suitably worded claim could theoretically be directed. For example, instead of communications protocols in Class _____, one might consider Class 710 Electrical Computers And Digital Data Processing Systems: Input/Output, or Class 370 Multiplex Communications. Selection of the alternative classes is best accomplished by perusing the USPTO classification index using both keywords and the hierarchical organization. After navigating to the HTML class schedule, one reviews the different titles and definitions to identify classes and subclasses that might include the technology.
• The next step is to click on the "P" buttons to show patents that recently issued with the given classification. By comparing filing dates with issue dates, and taking into consideration whether the applications were original filings or continuations, one can determine average recent application-to-issue times. This step is repeated for many different classifications of interest.
• The third step is to select from among the classifications of interest those classifications that have acceptable times to issuance, and try to draft new claims using verbatim text from the classification definition. In other words, one literally copies portions of the classification definition directly into the independent claims, and then adds enough additional limitations to recite a patentable invention.
• The last step is to file the application with a cover sheet that includes a proposed classification. When the patent office gets the application, they look to the proposed classification, review the independent claims, and immediately see language directly out of the class definition. Naturally, they send the application to the examining group handling the proposed classification, where the application is handled expeditiously.

This is truly patent judo; using the Patent Office's own classification system against them. The strategy places applications in under-used examining groups where they should issue quickly, and most likely provides even broader coverage than normal because these alternative examining groups are dealing with subject matters for which they likely will find little prior art. The strategy is not illegal, and in fact, should be appreciated by the patent office as a way of load balancing their examining groups.