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: www.patentsandventures.com. If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com. This newsletter should not be construed as legal advice. © 2010 by George Levy