August 31, 2022
Managing Intellectual Property
Managing Intellectual Property interviewed Finnegan attorney and former USPTO patent examiner Angeline Premraj to discuss tips for successfully navigating the patent application and prosecution process.
Clear communication was key for Angeline when she served as a patent examiner from 2015 to 2018. She said an applicant could include a general statement of how a device made a sensor measurement more accurate, but an even stronger application would identify the element of the sensor the invention targeted and how the invention solved a specific problem with said element. She found this type of drafting especially useful when an application had eligibility issues, because she could identify an improvement to a specific type of technology as opposed to an abstract idea.
She also noted the importance of drawings, particularly those showing the function or structure of the independent claims. She said, “Providing such drawings helped me frame the search for relevant art instead of forcing me to go back and forth with the applicant on what was or wasn’t related art.”
Interviews with patent examiners are also important. Examiners appreciate when counsel set agendas for the interview and prioritize the issues. Angeline found it helpful to discuss Section 101 or obviousness issues before spending time on other USPTO objections, such as those related to written description and enablement.
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