Compact prosecution. Another very good lecture today on how prosecution should be conducted.
The point is to put as much work as possible upfront, and present a correct first action on the merits that addresses all issues of patentability, as well as any issues that the examiner reasonably foresees.
There are good reasons to do it this way, such as the facts that it saves applicant time and money and makes a clearer file wrapper for anyone who has to take it up subsequently. Writing clear office actions that don’t assume the reader will understand your points is key.
For those of you who don’t know what an office action is, it is the Office’s official response to applicant’s application for a patent. It addresses any legal issues and informalities such as spelling errors or other errors. The way it is supposed to work is that the examiner writes a first action on the merits, and applicant either doesn’t respond and abandons the application, or responds with amendments that address the issues raised in the first action. Assuming the examiner has done a thorough and correct job, the second action should be final, and should either be a rejection or an allowance. If the examiner screws up, he/she must fix the errors.
Now, there is good motivation for an ethical examiner to follow compact prosecution guidelines: you only get one count for the first office action, and one when the case is issued or abandoned. The more correspondence necessary with applicant’s representative because you haven’t written clearly, the more time you are spending on the case without credit. It also means more time writing multiple non-final actions to address all the deficiencies in the first action.
So now that I’ve laid out some of the case for compact prosecution, how about what seems to be the alternative argument for new hires? That argument would be: “Do as many applications as you can.” Now, no one who has said this has meant “do a crappy job.” Here is the argument that I’ve heard from several different people:
You just aren’t going to get it completely right on your first few actions, no matter how much time you put into it. If you try to be a perfectionist, you’ll never get through applications fast enough. The more you do, the better you get, and so the important thing is to do as good a job as you can in as little time as you can do it, so that you get that experience.
No one is advocating putting out unreasonable office actions, of course. By doing a faster job, you somewhat increase the burden on your trainer to review your work, but you are also getting feedback faster from your trainer, which means you get to corrections faster. So this advice isn’t really contrary to compact prosecution, as it might initially seem. But the question becomes: will the trainer’s advice to fix my office action be to do what I would’ve done anyway, had I allocated myself more time?
Answer: Probably not.