Expert: George H. Morgan, P.E., Patent Agent - 11/3/2007

Question
In you opinion, when applying for a patent, which strategy is better:

  * making sure you have broad claims that you can negotiate away after a first rejection
  * making only narrow claims in hope of not having a first rejection

Do you have any idea what percentage of applications go through with no rejections?

Answer
You have just asked the "$64,000" question.

There have been two court rulings that have altered the strategy from "the good old days".

Good old days:  Often skipping the search, writing broad claim first, then narrowing down is subsequent claims & using lots of dependent claims. Then, on the office action, modifying claims to what the examiner would accept.

(The reason for often skipping the search, if the inventor was knowledgeable in the art or trade, that without the search, 10% were killed by prior art, while with the search, 10% were killeld by prior art found by the examiner that was missed by a manual search by the professional searcher I employed, of the patent files in "shoe boxes", in my experience at that time.) The problem some 12/14 years ago, is that the public search area was not kept up i.e. patents not returned to the file often were not replacees, as the USPTO was in the process of trying to go all computer searching by the examiners. The USPTO around that time threw out, discarded, a large reservoir of paper prior art such as in technical journals, magazines, and published techincal papers.

Then came the Festo decision,that said that if you narrowed a claim for acceptance, you lost much of the claim to "equivalency". i.e. the narrowed claims were interpreted more narrowly, than if they had been crafted so they were acceptable the first time around. So, the "Doctrine of Equivalents" would not be invocable on claims that were narrowed to overcome an examiner's objections.

At that point, careful searching, and well crafted claims for acceptance became even more important than before.

So, the Hobson's choice was going as broad as possible, but being wary of having to later narrow the claim, and lose the ability to invoke the doctrine of equivalents.

Then, recently, the bar on "obviousness" was substantially raised. In the past, the examiner might cite element A from one class of inventions, and element B from another class of inventions, and say the invention was obvious. Then, I could argue that in light of court decision such & such, as neither of the patents cited "taught" to the ends of the present invention, it was not obvious.  That did the job. That court decision was reversed by the later court decision.

Now, with the obvious bar raised, prosecuting patent applications has gotten even trickier.

If the patent reform bills under consideration by the Senate and the House of Representatives were passed, even in the so called "compromise" form, our patent systeem is weakened & this will effect America's economic furute. So, if you are a serious independent inventor, and a votor, you need to urge your Senators to vote no.  Especially oneerous, is the provision eliminating the "first to invent" system we have now, and going to the "first to file" systerm to "harmonize" our patent system with the rest of the world. However, as our system was the world standard for many years, that justification is just plain bogus. The firms like Microsoft who want to run roughshod over outside inventors & related technology corporations are for the "reforms" while the practioners, inventor activists, and big drug companies, and many other interest groups are against it. It will also raise costs for the patent applications.

Another tip, beware of those firms advetising patent services that are on my profile page. Too many scammers that are listed on by "Ron Riley Scam Alert Page" link on the Inventors Resources page of my web site. I have complained to All Experts about it, and they blame it on Google, saying they have no responsibility.  Also, the Better Business Burea "accredited" firms (i.e. members) is not a good way to screen invention promotion scammers. That is the first place they join, to establish credibility with  potential "marks".

Hope that helps,

George H. Morgan
Professional Engineer (since 1958)
Patent Agent (since 1073)
web site (lots of helpful info) http://www.evansville.net/biz/patagent