The PTO has been quietly expanding its patent quality review program using both pre and post-allowance approaches. The general perception is that the quality review is both over-inclusive and under-inclusive. It must certainly be true that the review is catching some patents. However, the following quote -- reportedly from a Patent Examiner -- suggests that the review program -- at least the top-secret post-allowance review -- may be somewhat misdirected in its approach.
"[I]f your claims are long and all the t's and i's are crossed and dotted, those cases will get a pass. If the claims are short and the subject matter is easily comprehensible, they will get reviewed. (A note to attorney out there -- make those claims long, heh). Short claims will get many rejections no matter how novel or unobvious they are. They will make the applicant to put anything in for an allowance. First action allowance will get pulled (at least in my group)." (via G. Ahronian)
Many patent attorneys draft their initial claim in short-abstract form. I have heard of the two finger approach for the first claim which requires the text of claim one to fit under your index and middle fingers. My approach has long been to provide an initial claim that is long and detailed so that the examiner can understand the invention in concrete form. With later independent claims, I begin to draw-out the scope to cover a larger ranger of enabled scope. I wonder how this approach fares under the new quality review process. Of course, this approach must be used within the applicable rules -- notably 37 CFR 1.75(g), which requires that the "least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable."
- Secrets at the PTO: The PTO has been stingy and secretive with all information regarding its Office of Patent Quality Assurance (OPQA). What we do know is that OPQA rejections (or their underlying reasoning) are not provided to patent applicants or placed into any publicly available record. Any further information regarding operation of the OPQA would be appreciated (either via email or comment). email@example.com.
- Litigation Notes: Anyone litigating a recently issued patent may want to submit a FOIA request to the PTO to obtain OPQA information regarding the patent in question. A routing sheet may be available. Examiners -- Is an internal record maintained regarding OPQA rejections?