Section Review

The collaborative law process (“collaborative law”) has potential to improve patent prosecution at the U.S. Patent Office (USPTO). Principles of collaborative law already naturally exist in patent prosecution — like common interests between patent owners and the USPTO, maintaining relationships between patent attorneys and USPTO examiners, and a common desire for efficiency. Implementing additional aspects of collaborative law into patent law — like preparing a timeline for resolving patentability issues and implementing confidentiality — could increase patent prosecution efficiency and decrease patent owner wait time to receive a patent, which currently averages about two years from filing a patent application. 
      

An Introduction To Collaborative Law And Patent Prosecution

Collaborative law is a style of negotiation that promotes interest-based dispute resolution by creating an environment where opposing parties work together, instead of against each other, to find a solution that benefits both parties. To achieve this, collaborative law leverages agreed-upon timelines for resolution, an agenda setting forth how and when disputed items will be discussed, strict confidentiality, and, in some jurisdictions, a neutral third party who helps with technical questions and/or preserving relationships and emotional health (i.e., a one-coach model), which collectively promote an environment of open communication and interest-based negotiation. 

Patent prosecution is the process by which a patent is obtained at the USPTO. In patent prosecution, patent attorneys represent the patent owner (this party will be referred to as “applicant”), and USPTO examiners advocate for the public interest by ensuring that the patent application meets the requirements of patentability prior to being allowed and granted as a patent. After the applicant files a patent application at the USPTO, the examiner “examines” the application for patentability deficiencies. If patentability deficiencies are found, an office action is issued to the applicant, which asserts the patentability deficiencies of the application. The applicant may respond to the office action by amending the claims of the patent and/or refuting the examiner’s asserted deficiencies. If the examiner agrees with the applicant’s response, then the application is allowed. If the examiner disagrees, then another office action is issued. Additionally, the applicant may have interviews with the examiner to discuss office actions. Generally, this office action and response process repeats until the patent application is found allowable, the applicant appeals the examiner’s alleged patentability deficiencies, the applicant lets the application go abandoned, or the 20-year statutory term of the patent application expires. 

Importantly, communications with the USPTO (e.g., office actions, responses, and summaries of examiner interviews) become part of the public record and can be used in litigation. The USPTO has an interest in these communications becoming public because it demonstrates that the examiners are fulfilling their duties. However, this can hinder collaboration between examiners and applicants because an applicant may not want to share their confidential interests regarding the patent application (e.g., targeting a competitor’s product) for fear that these interests would become public. Without sharing this information, it can be difficult for the examiner and applicant to collaborate when trying to find allowable claims that meet the applicant’s interests.

The Naturally Collaborative Nature Of Patent Prosecution

The interactions between applicants and USPTO examiners can be naturally cooperative to an extent, even without confidentiality, because both parties have common interests in patent validity, patent prosecution efficiency, and maintaining relationships (applicants and examiners may work together over many years). Currently, implementing principles of collaborative law comes down to applicant and examiner cooperation. For example, I recently worked with a patent examiner to help him with a very tight deadline on his end. While we didn’t always agree, we were focused on the common goal of getting a patent allowed. We probably accomplished six to 12 months of work within one week because we had a common goal, were respectful to each other’s views (even though we didn’t always agree), had a set deadline, and did our work in a series of brief phone calls. Even though this process was informal, the outcome was positive for both the USPTO and the applicant. To build on this informal process, the USPTO could implement a formal process like this example with some additional principles of collaborative law to further improve patent prosecution efficiency.

Implementing Collaborative Patent Prosecution At The USPTO

Implementing collaborative law in patent prosecution at the USPTO (“collaborative patent prosecution”) would include a formalized process that (1) developed timelines and agendas for achieving allowable claims, (2) addressed issues of patentability in a series of scheduled in-person or video meetings, and (3) applied confidentiality to the patent prosecution process but not the solutions that lead to allowable claims. 

For example, a patent owner wishing to pursue collaborative patent prosecution would file a request to do so at the time the patent application was filed. Filing this request would initiate confidentiality such that communications between the applicant and the examiner would not be made public. The examiner would prepare a first written office action that would be used as a starting place for developing an agenda and timeline for resolving patentability rejections. The collaborative patent prosecution process would proceed according to the agreed-upon timeline and agenda, and the confidentiality would allow for more interest-focused conversations between the applicant and the examiner.

Upon agreement of an allowable patent, the patent owner would write a memo summarizing how each patentability rejection in the first office action was resolved. The examiner would review the memo and, if needed, prepare a second memo detailing any disagreements. Then the memo(s) and the first office action would be published, providing a public record of how patentability was established. If no allowable claims were agreed upon, the first office action would be published, and the applicant could enter standard prosecution, if desired.

Conclusions

Patent prosecution efficiency at the USPTO can be increased by implementing principles of collaborative law. Some of these principles are already naturally part of the prosecution process — like leveraging common interests of patent validity, efficiency and maintaining relationships. Other principles — like confidentiality, and examiner- and applicant-derived agendas and timelines — could be implemented by the USPTO or Congress to increase the efficiency of the patent prosecution process.