Getting a utility patent is hard. Only fifty to sixty percent of all applications mature into a patent. However, you can increase your chance of getting a patent by implementing the following tips:
- Tip #1: Conduct a patent search to find out where to focus your patent application;
- Tip #2: Preload the patent application with details;
- Tip #3: Conduct an examiner’s interview; and
- Tip #4: Request Track One Expedited Examination
Tip #1: Conduct a patent search and focus on the white space of the search
A prior art search is a search of various databases to see if your invention is novel. If nothing is found and your invention is new, you can get a patent on your invention.
However, frequently the prior art uncovered during the prior art search does not give you a simple yes or no answer. Rather, the results typically show that some features of your invention can be patented while others cannot. The features which were not found during the search are what we call white space.
The time spent in preparing the patent application should be focused on explaining details of the features which were not uncovered during the search. Otherwise, without the prior art search, an equal amount of time would be spent explaining the various features of the invention including those features which cannot be patented.
Tip #2: Preload the patent application with options, variants, ranges, and alternative embodiments
The patent application should include the details of the invention in the detailed description section. Oftentimes, inventors believe that to get a broad patent, the application should be written in vague or generic terms. This strategy would be incorrect. The proper strategy is to claim broadly but explain the specific details of your invention in the specification.
Let me explain.
The purpose of explaining your invention in excruciating detail is to give yourself the ability to amend the claims during the examination to overcome a prior art rejection.
As a simple example, if you claim metal and the examiner finds aluminum, the metal claim would be rejected by the aluminum prior art. Metal is a broad generic term that encompasses aluminum. Metal is thus old and not new in view of aluminum.
However, if you included stainless steel in your patent application, you could amend the claim to stainless steel. Stainless steel is different from aluminum and thus new. Otherwise, if stainless steel was not preloaded into the patent application from the start, you could NOT amend the claims and could NOT over the prior art.
The details of your invention should include various options, ranges, variants, and alternative embodiments. You can read more about this in my article on writing the detailed description section. By including these details, you leave yourself the ability to later amend the claim during the examination. If you do not include these details, you cannot add them later on during the examination and you cannot amend your claims to overcome the prior art reference.
Tip #3: Interviewed the examiner
You can speak to the examiner over the phone about the invention and their reasoning as to why they rejected your application. Oftentimes, you will get a sense of the examiner’s attitude toward your invention which is very valuable when deciding next steps. They will let you know whether they believe your invention is worthy of a patent or not.
The Examiner’s interview is much more efficient than merely sending a written response to the office action. Any miscommunication or misunderstanding of the written response would have to be corrected in response to the next office action. This process takes a significant amount of time and money. Much of this confusion can be eliminated during a simple phone call with the examiner which is referred to as an examiner’s interview.
If an agreement is reached as to the allowability of the claim, it could even be possible to ask the examiner to do an examiner’s amendment.
If you want to learn more about the examiner’s interview, read my article on Examiner’s interviews.
Tip #4: Request Track One Expedited Examination
Implementing the USPTO’s Track One Prioritized Examination Program can significantly enhance your chances of obtaining a patent. This program expedites the examination process, aiming for a final disposition within about twelve months. Notably, Track One applications have demonstrated higher allowance rates compared to standard applications. For instance, in 2019, the average allowance rate for Track One applications was 90%, surpassing the overall USPTO average of 76%.
By opting for prioritized examination, you not only accelerate the patenting process but also increase the likelihood of your application being approved.