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                In June, we commented on a post on David Kappos' Director's Forum blog titled, "Five Tips for Practitioners."  Kappos has recently updated that post to include new tips and has expanded the "five tips" to "ten tips."  At the top of the list is "conduct[ing] interviews."  The full list is copied below:

1) CONDUCT INTERVIEWS:  Set up interviews when possible. Interviews can help applicants and examiners quickly identify points of agreement as well as points of disagreement.  An interview will help advance prosecution and provide an opportunity to facilitate a possible early allowance. 

2) KEEP CLAIMS MANAGEABLE:  Avoid filing excessive numbers of claims. Filing a manageable number of claims will enable the examiner to enhance prosecution by directing examination efforts at the heart of applicants' invention. 

3) PROVIDE GOOD TRANSLATIONS:  Do a careful job of translating foreign-language applications into English before filing an application in the United States.  Poorly translated applications often result in undesirable lengthy prosecution resulting from lack of clarity arising from indefinite claim language or unclear wording in the specification. 

4) CLEARLY IDENTIFY NEW LIMITATIONS:  When adding new limitations to claims during prosecution, include a brief section in the remarks citing the location in the specification or drawings that provides support. This will eliminate unwarranted new matter rejections under Section 112 and assist the examiner in better understanding the meaning of the claims.  

5) FILE THOROUGH RESPONSES:  Take care to ensure that your response addresses the specific issues set forth in the examiner's office action. Responses or amendments that fail to address the issues in the office action unduly extend prosecution. 

6) ADVANCE AMENDMENTS/ARGUMENTS EARLY:  File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible.  Amendments submitted after final are more difficult to deal with procedurally, are not automatically entered, and extend prosecution. 

7) COORDINATE US/FOREIGN APPLICATIONS:  Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application.  Success of the Patent Prosecution Highway (PPH) shows that applications drafted or amended in response to search reports and patentability opinions in corresponding foreign or international applications have a much higher allowance rate and shorter prosecution.  

8)  DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention.  If the claim set is not initially drafted to capture the protection needed or desired by the applicant, the examiner will have difficulty doing a comprehensive search on first action.  Furthermore, the examiner will have difficulty anticipating what might be claimed in the future, if the initial claim set is misdirected or overly broad. All of this extends prosecution at everyone's expense.    

9)  KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL:  Submit a focused Information Disclosure Statement (IDS).  Include in an IDS only those references material to patentability.  The citation of references that are not material to patentability does not promote a focused examination.  Also, be careful to avoid the repeated citation of the same reference. 

10)  DRAFT CLAIM SET FROM BROAD TO NARROW:  Draft your claim set beginning with the broadest scope to which you feel you are entitled and concluding with the narrowest scope you feel merits protection.  A claim set that is graduated in scope from broad to narrow assists the examiner in performing a complete and focused search on first action and can help the examiner anticipate future amendments.  A claim set that is merely broad does not assist the examiner in performing a focused search and often leaves the examiner guessing as to what might be claimed after first action.  This can lead to piecemeal prosecution and the citation of new art after amendment. 

Again, scheduling an interview is #1 and is notable as part of an overall emphasis Kappos has put on interviews since taking over as director.  Kappos is continuing his emphasis on stressing cooperation between examiners and practitioners.  Almost all of the tips, in general, refer to advancing prosecution as early as possible, eliminating needless delays and duplicate work.  By encouraging the applicant or practitioner to put their best foot forward initially, clear communication between the examiner and applicant/practitioner results earlier and the total prosecution time is reduced.

David Kappos recently blogged about the importance of reexamination proceedings.  He acknowledges while there are plenty of "jobs locked up in [the] backlog," there are also "lots and lots of jobs riding on the patents we have in reexamination."

Reexamination proceedings grew every single year in the period from 2000-2004 and the period from 2006-2009.  This is in part due to numerous developments, including the Central Reexamination Unit and the decision in KSR v. Teleflex (lowering the standard for obviousness), which have made reexamination a more effective tool for challenging the validity or scope of patents or using it as a defense in an infringement case.

Kappos also provided a link to the "Best Practices" for reexamination.

While #5 seems to be somewhat common sense, #1 is notable as part of an overall emphasis Kappos has put on interviews since taking over as director.  Overall, Kappos really seems to be stressing cooperation between Examiners and practitioners (see also #2).  "Put[ting] it In English" (#4) refers to poorly translated applications, which Kappos remarks "frustrate examiners and unnecessarily delay prosecution.

The allowance rate is significantly on the rise.  PatentlyO recently discussed this trend and cited an increase from under 50% to around 65% over the past few months.

While it is unclear what the actual cause of this increase is, the increase may be due to an overall less adversarial approach by the PTO.  Since David Kappos has taken over as director, there have been numerous initiatives designed to promote cooperation between the examiner and the applicant that may have directly impacted the allowance rate.  The First Action Interview Pilot Program, essentially allowing applicants to have an interview with the Examiner prior to the issuance of a first office action, was implemented with the purpose of getting the applicant and the Examiner on the same page regarding the nature of the invention earlier in the process.  Getting the Examiner and the applicant on the same page earlier in the process may have increased the allowance rate, as Examiners can get a clearer idea earlier about which parts of the application are allowable subject matter.

"Project Exchange," allowing applicants with multiple applications pending at the PTO to withdraw an application in exchange for expedited examination of another application, is another initiative that may have had a direct impact on the allowance rate by allowing applicants to prosecute their most pressing, and likely best, applications right away.  Even initiatives like the Patent Ombudsman Program, while not directly impacting the allowance rate, are indicative of an overall more cooperative approach by the PTO since Kappos took office.

The economy may have also played a role in the rising grant rate.  As the economy worsened, companies downsized, likely allowing some applications to go abandoned and decreasing the allowance rate.  However, when the economy improved somewhat towards the end of 2009, companies reinvested in R&D and used additional resources to prosecute existing applications.  When companies resumed prosecution, the allowance rate could have conceivably increased as a result.

The USPTO is now offering an application exchange program ("Project Exchange") allowing applicants that, prior to the program's inception, had more than one application pending at the USPTO to withdraw one of those applications in exchange for expedited examination of another application.  The program will be limited to 15 applications per entity and will run until December 31, 2010.

From the USPTO website: "By providing incentives for applicants to withdraw unexamined applications that may no longer be important to them, Project Exchange is expected to appreciably reduce the backlog of unexamined patent applications pending before the USPTO. "  Project Exchange is one a few initiatives with the goal of reducing the backlog of applications at the PTO implemented since Director David Kappos took office (see also the "First Action Interview Pilot Program").

(i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO's rulemaking authority and

(ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency's rulemaking authority.