Patents are one of those rare items where one can employ the same strategy to improve patent quality and reduce patent cost. The breadth of patent claims, and their value, are generally reduced the more the examiner for searches for art references that teaches the elements of the patent. Yet reducing examiner searches also reduces patent cost.
Examiners can use a patent application as a guide for finding art references, even if the art is only slightly relevant to the application. As a result, the more the examiner searches, the more likely the examiner will find disparate art that is stitched together using the application as a template and used to reject the application. When the examiner is given fewer opportunities to search by shortening the prosecution (examination) process, patent claim quality goes up.
Shortening the prosecution process and reducing examiner searches also greatly reduces patent costs by reducing costly office actions. The key to shortening the prosecution process is to identify the patentable subject matter after one examiner search, and work with the examiner to have corresponding claims quickly allowed. The First Action Interview Pilot Program can be invaluable in identifying the patentable subject matter during the examiner's first search.
This strategy does not preclude fighting for even broader claims than those identified after one search. However, broader claims are most cost effectively secured by filing a follow on continuation application. Continuing application costs are comparable to continued examination costs. However, the continuation application is then pursued without risk to the issued patent from subsequent art that the examiner may discover.
The graphs below compare monte carlo simulations of costs and examiner search hours for an aggressive allowance strategy as outlined above and a minimal amendment strategy.
Holding an examiner interview for every office action and other prosecution event is also critical to reducing examination costs. Interviews help the examiner understand the distinguishing elements of the invention, and allow the examiner to give direction that can make further rejections unnecessary.