6 Reasons Why IP Heads Need To Focus on Patent Proofreading

It is estimated that around 600,000 patents get filed at the USPTO office each year with a 34% cumulative increase in the issued patents over the last decade. Hence, the average pendency for a patent (which is about three years), tells us that patents are actually getting granted faster. The statistical overview shown below reflects that around 354,507 patents were issued by the USPTO office in the year 2019.

While the increase in issued patents sounds promising, it is to be noted that almost 98% of US patents have at least one mistake in them. A study of around 2000 odd US patents was conducted and they found at least one mistake that was present in 98% of those patents, and over 50% of the mistakes were made by the USPTO during the prosecution stage. This happens because there are a lot of amendments, and to-and-fro communications (such as submission of ideas, record of assignment, updation and submission of priority information and documents) done during the prosecution of the patent application. There is also a lot of informational transaction done, which is where the errors often creep in. Therefore, it was concluded that around 50% of the errors were made by the USPTO and the rest were from the applicant’s end.

Out of these errors, over 33% of these mistakes required a ‘Certificate of Correction (CoC)’. Also, 2% of the mistakes were serious enough to cause problems in the patent filing and also impacted the scope of the claims as well as their enablement.

Therefore, a patent attorney or an IP head who files upto 100 patents in a year will probably witness atleast a couple of patents which have an error serious enough to cause problems, if overlooked.

Source: https://www.law360.com/articles/4987/u-s-patents-riddled-with-mistakes-survey-finds

Over the past twelve years, Sagacious IP has been instrumental in helping its clients (Attorneys at Law Firms and In-House Attorneys of the Corporates) proofread their patents, that have helped to avoid errors such as incorrect claim construction, grammar, enablement, completeness in description, and even errors having technical impact.

Luckily, there are ways to resolve such occurrence by including patent proofreading step, which can go a long way in ensuring that the patent provides the protection you deserve.

Why IP Heads need to focus on patent proofreading

1. Limited Scope of Patent

Companies often receive a standard ‘Notice of Allowance’ that is received from the USPTO office. Such notices sometimes show discrepancy in the number of claims submitted vs. the number of claims that are actually issued by the USPTO office. An example below shows how allowed claims from 1-18 actually turned to just issuance of one claim by the USPTO while the 17 other claims were missing from the issued document. This is why it is necessary to proofread the claims after receiving a notice of allowance. Without proofreading, companies limit the scope of disclosure.

2. High Risk of Invalidation

There is a high risk of invalidation if priority information is claimed from a U.S. provisional application, but it goes missing in the issued patent. This can be rectified easily by quickly proofreading the patent. We have witnessed third parties who have initiated invalidation in such scenarios on how such errors, if not rectified, can cause future problems.

Also, the below image shows grammatical errors and inconsistency in claim terms that could possibly lead to invalidation. The image below shows saw motor being written as saw moor as well as other highlighted errors in the document.

3. Opening Door to Re-examinations

The example below shows how an applicant had actually submitted eight references in the IDS, however, all eight of them went missing in the issued document. If the examiner had not considered that error, then this could have been an open window for re-examination or invalidation proceedings in the future.

4. Change in Scope of Claims

Without patent proofreading, there are chances that the claim elements are not defined correctly or there is an ambiguity in defining claim elements. For example, as mentioned in the image below, the issued patents have an antecedent error where a saw motor is being introduced again, although it had already been introduced earlier. In another scenario, during a patent litigation proceeding, the court had taken a very adverse position on the patent that was granted, and all the errors were related to antecedent basis. This proved to be highly embarrassing for the law firm which was involved. Such a situation could have easily been avoided if proper patent proofreading had been carried out.

5. Possibility of Post-Grant Opposition is High

The below image shows the term arm being struck out on the left, while in the issued patent, the support arm member is still there but has not been properly incorporated in the issued patent which could lead to change in the actual interpretation of the claim, as well as the claim being open to future oppositions and future invalidation. Such occurrence reduces your scope of invention and pose a threat in the future.

Final Thoughts

Proofreading patents avoids such common and critical errors as mentioned above and ensures that everything is aligned with the applicant’s document as per the examiner’s amendment and USPTO laws. By complying to these norms through proofreading, we ensure that all amendments are incorporated in the claims. Watch our webinar here to know about our patent proofreading service.

-Prateek Mohunta (COO), Sameer Kumar (IPMS) and the Editorial Team

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