Crafting the specification, and particularly the claims, of a patent application can be critical to the chances of ultimate allowance of the application into a legally enforceable patent. This applies not only to distinguishing your invention over the prior art or confirming that your invention is eligible for patent protection, e.g., not merely an abstract idea, but also to whether your invention will be directed to an technology unit that will give your invention a fair and timely hearing. It must be understood that the specification and claims are used by the USPTO to determine, i.e., “classify”, into what are technology art unit (known as “Group Art Units” or “GAU”) your application will be assigned for examination. The classification uses a complex, nuanced and subjective criteria based upon a general overview of the specification and close examination of the wording of the claims. This review can shunt your application into a GAU with an abysmal allowance rate, or, with minor modification of focused wording, into a GAU with much more favorable allowance rates. This fact is creating a need for Patent Classification Review prior to the submission of the application.
There are approximately 340 separate group art units. The number or percentage of applications allowed by the various art units varies tremendously. Some art units have an allowance rate of over 80 percent. In contrast, some art units have a history of allowing less than 10 percent of the applications that pass through their portal. Art units having such meager allowance rates are the place applications (and the inventor’s aspirations) go to die. They are innovation “kill zones”.
Compounding the problem is that once your application is assigned to a GAU, it is virtually impossible to have it reassigned to a group that will truly judge your application on the merits.
Further compounding the problem is that the criteria for assignment is subtle at best. How you write your claims or present the problem solved by your invention can be critical. But there are no bright lines to follow or magic words to use (or poison words to avoid).
The USPTO has divided the universe of innovation into over 150,000 classes and subclasses. The invention described in your application may fall into multiple classes and subclasses. However there is a complexity and subjectivity of rules and interpretations that determine which combination of class and subclass will be viewed as primary or dominant. And this determination will govern into which GAU your invention will be assigned. As stated above, this determination can govern whether your good idea will be granted as a patent or tossed aside as ineligible for patent protection.
The determination may also fate your application to a GAU that has a multi-year backlog versus a closely alternate GAU with a 12 month backlog until first office action.
The classification review takes place at the preliminary stages after receipt of your application. The mechanism of the classification are unseen and essentially without review.
One example of this dichotomy is found in applications that can, in one light, be viewed as computerized business or data processing methods and, alternatively, as applications directed to the use of artificial intelligence in conducting a business method or processing of data. Difference in the determination of which activity is dominant can have dramatic impact on the chances of a patent being awarded. Knowing how to craft the specification description and the claims are key to avoiding this precipice.
This need for guidance has fostered the development of third party services for pre-submission review of draft patent application. Again the criteria is complex, esoteric and subjective, making it often difficult for the individual practitioner effectively navigate. In some cases, obtaining a professional classification review can be as valuable as a professional prior art search. Both are of great assistance to the practitioner to effectively draft the application and avoid undesired consequences.
LexisNexis offers its “Pathways™ Predictive Analytic” services. This service, utilizing proprietary software algorithms, is advertised to enable “patent lawyers to easily characterize inventions in a way that can lead to more cost effective applications that can be approved more quickly.” LexisNexis is offering pre-submission reviews/reports, in conjunction with Serco, to predict the GAU to which the draft application may be assigned. It provides suggestions for alternate claim language or focus that may result in assignment to alternate GAUs. The reports include public information regarding GAU allowance rates as well as a “lottery map” that outlines percentage chances of the application being assigned to an examiner within the possible GAUs having favorable “examiner time allocation”. The lottery map is understood to use proprietary algorithms.
Pre-submission classification review is another tool is being offered to the patent applicant to enhance chances of achieving patentability and avoiding unnecessary cost and time delays. It is understood that the services utilize publicly available metrics, combined with proprietary algorithms. There may be soon be multiple entities offering similar services. From the published cost schedules, compared to the overall cost and time investment of seeking patent protection, this may be a very worthwhile service to obtain. As suggested above, obtaining such patent classification review may be as commonplace as obtaining a third party prior art search. As every skilled practitioner knows, a good prior art search can greatly assist in knowing what attributes of the innovation to emphasize in the application. Similarly knowing the GAU environment can provide similar guidance.
© David McEwing 2020