Wednesday, September 22, 2010

Speeding up Patent Prosecution

The statistics published by the patent office are mind boggling. Since the creation of the patent system in the US more than 7 million patents have been awarded. At least 400,000 applications were processed last year and more are expected next year. There are 728,000 applications in the pipeline; 6000 examiners are employed.

One of the most important statistics is the pendency rate: the length of time it takes for a patent to be awarded. The current wait is about 3 years. Software patent applications may wait 5 years. Given that the life of a patent is 20 years, these numbers are sobering. How can you speed up the prosecution of your invention? Several options are at your disposal.

Petitions “to Make Special” can be filed to have your application considered out of turn by the USPTO. (MPEP 70.02) No fee is required for this petition if you invoke any the following reasons:

· You are at least 65 years old; or

· Your health is precarious; or

· Your invention will improve the environment; or

· Your invention will contribute to the development or conservation of energy resources; or

· Your invention will assist in countering terrorism.

· Your invention involves superconductivity

Other reasons for filing a petition to make special require a fee. These include:

· Manufacturing of the invention is being delayed by the absence of a patent; or

· Your invention is being infringed upon; or

· Your invention is related to recombinant DNA or

· Your invention relates to HIV/AIDS or cancer.

In addition to the above petition mechanism, a pilot program has been initiated by the patent office, called the Pilot Program for Green Technologies Including Greenhouse Gas Reduction. It allows inventions relating to green and clean technology to be placed on the fast track. The claims must be directed to a single invention that materially enhances the quality of the environment, or that materially contributes to: (1) the discovery or development of renewable energy resources; (2) more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction. Only 3000 applications will be accepted this year in this program.

Yet another program, called accelerated examination has been set up by the USPTO. It requires many more documents to be filed than a regular application including:

· no more than 20 claims with up to 3 independent claims;

· an Information Disclosure Statement (IDS) with a maximum of 20 prior art references materially relevant to the claims in your patent application;

· an "Examination Support Document" which explains in detail why each claim in your application is patentable over the prior art references with pinpoint citations;

· Results and methodology of prior art search.

This program requires your representative to perform, not only his job but also the job of the examiner. In comparison to court proceedings, he will have to act both as defense and prosecution. It is much more expensive than a regular patent application and can easily double or triple the cost.

Why is there such a huge backlog at the patent office? There is a combination of factors: The first is the sheer volume of applications driven by the desire of every inventor on the planet to give preference to the US Patent Office to file their invention. Why? Because the US is the largest market and is respectful of patent law. The second is that Congress is diverting filing fees paid by inventors, which should go to fund the USPTO activities, to other programs. These funds could pay for more examiners and better computer hardware and software. If you think this is wrong, contact your congressman and voice your displeasure with the current system.

For all its faults, the enormous delay at the USPTO may have a silver lining. While accelerating the patent process is usually the desirable thing to do, there are a few instances when this delay works for you instead of against you. For example, the technology or the market may not be ready for your invention. You may not have enough funds to pursue its marketing or manufacturing. In these cases, the delay at the patent office is exactly what the doctor ordered. In fact you can lengthen the process by postponing replies to office actions for as long as the response rules allow. You can also petition for a suspension of prosecution for up to 6 months (CFR1.103a).

For archived newsletters and a lot of information for the small inventor go to: If you have any question you can contact me at (858)259-2226 or email me at This newsletter should not be construed as legal advice. © 2010 by George Levy

Saturday, September 4, 2010

Everything I Know about Inventing, I Learned Playing Baseball

What do baseball and inventing have in common? Both require you to be at the right place at the right time. In baseball you need to start running as soon as you know where the ball is going, and position yourself in the path of the ball before it reaches you. In inventing, you need to file your invention early enough that by the time the patent is awarded – and the delay could be several years - the technology is there to manufacture it and the market is ready to purchase it.

You need to be at the right place at the right time. If you get there too early, you have a premature invention. For example, MP3 players became practical only when chip manufacturers were able to produce memory chips (RAMs) to record music less expensively than magnetic tapes. Even though memory chips did exist in the 70’s it would have been premature to patent such a music player. It would have been too expensive and bulky and no one would have bought it.

Another example of premature invention is sound on film invented by Charles E. Fritts, who filed Patent 1,203,190 in 1890. His invention could not possibly be manufactured because audio amplifiers did not exist at that time. Sound movies only appeared in the late 1920’s.

Another premature invention was the field effect transistor invented by J.E. Lilienfield who filed patent 1,745,175 in 1926. The field effect transistor only became realizable after the introduction of silicon planar technology.

The reverse is also true and an invention can be “postmature.” For example, don’t even try to invent a better sundial or solar compass. While these inventions might have been valuable in the 1800’s, today, GPS and solid state clocks render these inventions completely obsolete.

One of the first items in your business plan is answering this question: by the time your patent is awarded will the technology be available to build your invention and the market ready to purchase it? If yes, then apply for patent right away.

Why such a rush you may ask? The answer is that you are competing against a world-wide population which is growing and becoming better educated every year. The competition is fierce especially if your field is fast moving such as the Internet or biotechnology. In this situation, do not wait for all the technological and marketing ducks to be in a row. By the time they are, it will be too late and someone else will have beaten you to the patent office.

Trend awareness is important. Devices which may not be technologically or economically possible today, may be, in the future. Where are we now and where are we heading? To answer this question you need to be aware of technological and economic trends. Let’s examine a few current developments:

Recent technological advances include the iPhone, the iPad and the growth of social networks. Can you predict where Internet technology will be 5 years from now?

Latest climate related events have raised suspicions that oil consumption is causing global warming. Without oil, can you predict how transportation will be affected 5 years from now? How can you position yourself to take advantage of this trend?

Our nation’s addiction to oil is an increasing liability. It could be solved almost overnight by further encouraging businesses to allow their employees to telecommute to work. This suits professionals such as attorneys and accountants very well. It is also partially workable for engineers, some doctors (for example radiologists) and teachers. Imagine a world of telecommuters. What would be their needs? How would you solve their problems?

Telecommuting for employees leads to on-line education for students. The conventional educational model is too expensive for the service it delivers and has many competing alternatives available to replace it. On-line education can provide quality and inexpensive college education to a large segment of the population. Imagine a world where on-line education is the norm. What would the needs of the teachers and of the students be? How would you satisfy these needs?

The above is just a sample of trend examination. Keep up to date with the latest research. One of my favorite sites is where I scan the headlines every day. Another valuable resource is provided by Google at where you can study all kinds of trends associated with any particular topic.

And one more thing. If you’re going to play baseball watch the left field carefully.

For archived newsletters and a lot of information for the small inventor go to: you have any question you can contact me at (858)259-2226 or email me at This newsletter should not be construed as legal advice. ©2010 by George Levy