Kilpatrick Townsend Partners Eugenia Garrett-Wackowski, Paul Haughey, Babak Kusha, and Karam Saab recently presented on issues and strategies to consider when writing and prosecuting patent applications to withstand Alice challenges; to withstand post-grant challenges; using examiner interviews, accelerated examination, and Track 1 filings to expedite prosecution and allowance; and applying data tools to understand examiner tendencies.

Four top takeaways from the discussion, include:

Invest effort up-front in drafting applications to withstand Alice rejections.

• Frame with non-generic technology and use product-specific boilerplate.
• Use patent classifier tools to help structure application and select right terminology.
• Model claims based on USPTO examples of patent-eligible subject matter.
• Coach inventors to explain inventions from back-end rather than user-interface aspects.

Invest in quality applications to survive post grant challenges.

• Do patentability search.
• Consider putting articles on commercial success in record without a declaration.
• Avoid financial terms to avoid a Covered Business Method, particularly in independent claims.
• Include a lot of claims with a variety of terms, scope, and unusual terminology not easily found in prior art.

Consider expedited examination.

• Consider Track 1 Prioritized Examination or Patent Prosecution Highway. The up-front costs are usually covered by reduced and faster prosecution.
• Don’t use Accelerated Examination - costly, must discuss search results, and rarely used.
• Consider First Action Interview Pilot, and possibly combine with Track 1. Also, consider After Final Consideration Pilot.
• For design patent, use Design Patent Rocket Docket.

Invest time in getting to know your examiner and talking with him/her.

• Review your examiner’s statistics and career track ahead of your first interaction, include primary and supervisory examiners as needed.
• Develop a relationship with the examiner, especially if multiple cases in front of him/her.
• Use in-person, video-conference, or phone call-based interviews in that order.
• Use examiner statistics to assess how aggressive to be on continuations.