A View of the Future in Semiconductor Process: Patent Prosecution in Class 438 under the United States Patent and Trademark Office’s Final Claims and Continuations Rules
While the US patent prosecution process appears carefully defined and heavily regulated, a statistical review of 530 randomly selected issued patents and published patent applications from class 438 (semiconductor process) over a six year period indicates that since the system is run by people, ordinary negotiating norms significantly explain the outcomes observed. The results are driven by interests created within patent examiners by the performance management metrics and systems in place within the United States Patent and Trademark Office (PTO). The data indicates that practitioners willing to spend the time to prepare by understanding the average examiner’s interests and to be creative with the tools provided by the system will have ample opportunities to use proven methods of negotiation successfully with patent examiners. The PTO’s final rule changes for claims and continuations present significant restrictions on patent rights and limit or eliminate some of the most helpful negotiating tools. However, while the new rules changes powerfully affect a practitioner’s ability to work with a patent examiner, opportunities to apply negotiation principles like leverage and reciprocity still exist. Even under the new rules, practitioners are still free to drive outcomes in the faceless patent prosecution process using the same principles that apply in high powered board room negotiations.
Wake Forest Intellectual Property Law Journal Article Abstract:
This article invites the reader into the world of patent examiners and details the realities that result from rigid performance metrics enforced by the Patent and Trademark Office (PTO) in a typical patent transaction. The article discusses two proposed rule changes that, according to the author, present obvious restrictions on patent rights and restrict or eliminate some helpful negotiating tools for practitioners and examiners alike. The article analyzed a study of 265 randomly selected patents and 265 randomly selected abandoned or pending applications from applications in class 438 issued between January 2, 2001 and February 27, 2007. The author includes commentary for how to improve the system of metrics within the PTO’s infrastructure and outlines pitfalls and opportunities that exist for practitioners who will need to adapt to the proposed rules.
