In this article I address technical information that (i) should be included in the patent prosecution retainer agreement, and (ii) of which the prospective U.S. utility patent applicant should be aware prior to filing the application. This information is the documentation of prior research and development of the invention.
Somewhat counter-intuitively, documentation of failures prior to obtaining a final model should include notes, sketches and photographs of unsatisfactory prototypes. However, by the time the applicant receives the patent examiner’s first letter, at least three years has elapsed since the final prototype development. Chances are great that all the unsatisfactory prototypes, as well as sketches and notes from the invention’s development, are long discarded by the time of the receipt of the examiner’s letter. If the inventor had only known that this discarded information is often the very evidence necessary to overcome the rejection of his application!
Consequently, it is very important that the retainer agreement remind the applicant to (i) preserve all information describing research and development and (ii) safeguard this information for several years after generating it. In fact, on numerous occasions I have improved client chances of obtaining a patent by advising them to safeguard this information, both during their initial office consultations and in their retainer agreements. Those recommendations indeed made a happy day for these clients.
Here are the reasons why this retainer agreement reminder is so important for the client: In the best case scenario, the prospective applicant arrives in the patent practitioner’s office with a complete final prototype and/or written description and detailed drawings of the invention to be protected. The initial interview with the patent practitioner includes questions about ownership, shop rights, and events that initiate non-extendable filing deadlines. There is also a discussion of fees and the applicant then requests a retainer agreement from the practitioner. Thereafter the applicant reviews the retainer agreement, signs it, and submits it along with the appropriate fee check to his practitioner.
Consequently, the application is drafted and timely filed after much discussion, technical review and proofreading. Two years elapse and one day the applicant receives the first letter from the patent office examiner. All the claim sentences are rejected for the following reason: The claim sentences describe devices that are too similar to a previously existing device, or combination of devices, to merit U.S. utility patent protection. This rejection rationale occurs very often, and is generally based upon predictable development from the previously existing devices or methods. A meaningful reply to such a rejection requires a complex analysis, especially after a recent U.S. Supreme Court decision. However, there are approaches by which your patent practitioner can overcome this presumption of predictable similarity, and I have discussed several of them in previous articles.
Returning to the retainer agreement: A very successful approach to overcoming this rejection is to demonstrate, generally by documentation, photographs and affidavits, that the pending invention required considerable research and development. This evidence cannot exclusively consist of information that would predictably lead to a particular device by a routine change in a previously existing device or method. Instead, there must be a demonstration of “blind alleys” and experimental attempts that lead to failure, in order to overcome the examiner’s presumption that there was a straightforward and predictable manner in which to achieve the invention.
© 2012 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com or linked in websites.