Yes and no.  It can’t be overlooked that getting a Notice of Allowance means that simply paying an issue fee will give your client desirable protection.  This is always a goal when dealing with the USPTO.  However, getting a patent examiner to say that all of your claims, as originally presented, are patentable, ought to give the responsible patent attorney a reason to re-assess the strategy he or she has taken.  Specifically, getting the indication that your claims as written distinguish over everything means you might have aimed too small.  You might have defined the invention too narrowly such that there was additional, broader subject matter out there that could have been captured.  This is always a dilemma when drafting claims.  Patent attorneys are tasked with drafting claims that distinguish over the prior art, but do so in as broad a manner as possible.  That is, they want to get as close to the line that defines the prior art as possible, but not cross it.  Before a patent examiner reviews a patent application and responds to it, that line is difficult to see.  If the patent examiner tells the applicant in a first reply that everything is patentable, the applicant will not know how close he or she got to that line.

One approach which patent attorneys often take to deal with this situation is to utilize dependent claims.  What they will do is make the independent claims as broad as they can, often times even realizing that there is a strong likelihood they will be rejected.  This does not bother them, and often times they even hope the independent claims will be rejected.  However, further limiting the invention and providing additional, more narrow layers of protection are the dependent claims.  Patent attorneys will, in these claims, include more nuanced aspects of the invention that are not found in the independent claims.  This way, when the patent application is examined by a patent examiner, and the patent examiner rejects the independent claim, but allows the more nuanced dependent claim, the patent attorney will much more clearly know where the line of patentability is.  He or she will realize that the initial independent claim was too broad, but that the dependent claim has approached the line, but not crossed it.  What the patent attorney can then do is rewrite that dependent claim as an independent claim, a procedure which will result in a Notice of Allowance being issued.  

It is worth noting that securing a Notice of Allowance in a first Office Action can be a good thing for a client.  Specifically, though broad patents are unquestionably better for clients than narrow ones, a patent in and of itself has value.  For instance, say a patent owner were to sue a competitor for infringing his or her patent, a common way litigation might play out is that the competitor would challenge the patent in a procedure known as Inter Partes Review.  This procedure is quite expensive, and can cost in the six figure range.  However, if the competitor is willing to pay that fee and is successful in invalidating the patent, case closed.  

Now, let’s say that upon receiving the Notice of Allowance, the applicant filed a second patent application, called a continuation patent application, and ultimately secured a second patent on the technology, though directed to slightly different subject matter.  Further yet, what if the applicant filed a third application before the second one issued, a second continuation patent application, and was able to secure a third patent on the technology.  At this point the applicant would have three issued patents directed to slightly different aspects of his or her invention.  Of course, there will be some increased fees associated with these patents, such as the filing and attorney’s fees for the second and third patents, two additional issue fees, and two additional sets of maintenance fees for the second and third patents.  

However, despite these costs, if this applicant now tried to sue his or her competitor for infringing all three patents, the costs for the competitor to invalidate the three patents would be extremely high.  Specifically, the six figure number that the competitor had to pay above to attempt to invalidate the first patent would be tripled, and there would be no guarantee that all three patents would be invalidated.  In this situation, simply having an increased number of patents, regardless of the quality of the claim scope in each of them, makes defending against them very costly to potential wrongdoers. 

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.