Unpredictability at the USPTO: Managing Electrical Arts Prosecution Risk

In an article published by IAM, Don Featherstone and Tyler Drye explore why applicants in the fast-moving electrical and computer technology domains face greater uncertainty during patent examination at the U.S. Patent and Trademark Office (USPTO) and outline practical strategies to mitigate risk during prosecution.

Reasons for Unpredictability

Featherstone and Drye explain that “structural differences in how the USPTO organizes and staffs electrical art units, combined with the pace of technological change and the character of the underlying prior art” make outcomes harder to predict than in more mature technology areas. “Artificial intelligence, memory systems, semiconductors devices, and so on evolve in technology cycles measured in quarters, not years. Even highly capable examiners may struggle to maintain deep familiarity with such rapidly changing technologies.”

Changes at the USPTO

Procedural changes at the USPTO add another layer of uncertainty. It recently implemented an automated application assignment and docketing process, classifying applications based on the full disclosure and matching them to an examiner’s historical portfolio. While efficient, this system can result in complex, cutting-edge applications being assigned to examiners still building expertise in emerging technologies.

Even more recently, the Patent Trial and Appeal Board has placed greater weight on evidence of a material error during examination in determining whether to institute a post-grant challenge. As noted by Featherstone and Drye, “These two developments compound one another. Automated docketing increases the odds that cutting-edge subject matter will be examined by someone still building depth in that area, while the material-error framework makes any gaps in the resulting examination more consequential at the post-grant stage.”

Practical Steps to Mitigate Prosecution Risk

Although applicants cannot eliminate unpredictability entirely, Featherstone and Drye emphasize that they can “take steps to reduce it materially through a disciplined approach before, during, and after prosecution.” During prosecution, they recommend applicants proactively guide the search record through strategic prior art submissions and careful examiner engagement and then use continuation and divisional applications after allowance to help build a more resilient patent family.

The authors conclude, “The electrical and computer arts present a unique confluence of factors that result in unpredictable prosecution and enforceability. While none of these factors are within the applicant’s control, thoughtful prosecution strategy can mitigate the risks.”

Read the full article for a deeper analysis of what is driving unpredictability in electrical arts patent prosecution and practical guidance on how applicants can position their portfolios for stronger outcomes.