Commentary: A useful patent management government notice

Preparing and filing a U.S. patent application can be an arduous process. Company inventors meet with a patent attorney, emails are exchanged, the draft patent application is edited, drawings are prepared, and finally the patent application is filed with the U.S. Patent and Trademark Office — sometimes on a rushed basis to meet a deadline.

And then?

And then you wait, sometimes for more than two years. Eventually, the patent application is passed along to a USPTO patent examiner who conducts a search and usually rejects the application.

Thus begins patent prosecution: the back and forth negotiation between the patent attorney and the Patent Office in an attempt to win a patent.

New to the system is the Patent Office’s “Pre-Docketing Notice Pilot Program,” wherein three months before any patent application reaches a patent examiner, a notice is sent to the patent attorney informing them of that fact. No response is required to the notice, but expect the patent attorney to notify their client anyway.

One reason for reviewing the notice is things can be forgotten. In the hurry-up to file, were the correct inventors named? Are assignments in place from the inventors to the company? Was an information disclosure statement filed listing all known prior art (usually known prior patents and publications)? Any recent updates to that listing?

The notice provides an opportunity to do a quick quality assurance check on the pending application and address those types of issues.

The primary reason, however, is things change.

Did the widget covered by the pending patent application prove too difficult to manufacture or market? You can abandon the patent application before it’s reviewed by the patent examiner and maybe even recoup some fees paid at filing.

Is the widget now at version 2.0 with new functionality included but not yet invented when the patent application was filed? Best to review the patent application to evaluate whether it covers version 2.0 and, if not, whether a second patent application is desired.

Has a competitor recently introduced a lookalike widget? Again, a review of the patent application will inform if an amendment is necessary to thwart the competitor. Also, in such a situation, the patent application should be flagged for special handling.

Two years later, is the widget not as successful as once thought? Amendments can be made to the patent application to lower patent prosecution costs and latency. Conversely, if the widget is exceeding everyone’s expectations, perhaps it’s time to plan on building a portfolio of patents around the widget.

What is the status of any foreign patent applications? If they are the subject of mostly negative (or positive) findings, that may drive the prosecution of the corresponding U.S. application.

The USPTO notice thus triggers what good patent managers have always known: review your patent portfolio early and often.

Kirk Teska is managing partner of Iandiorio, Teska & Coleman, an adjunct professor at Suffolk University Law School, and the author of “Patent Savvy for Managers” and “Patent Project Management.”