The teaching examples can be used to provide a starting point for any discussion or argument in favor or against a finding of obviousness during patent examination at the USPTO, including arguments related to Combining Prior Art Elements; Substituting One Known Element for Another; The Obvious To Try Rationale; and Consideration of Evidence in an Obviousness Determination.

According to the article, USPTO Director David Kappos is aiming to cut the average wait time from thirty-six to twenty months in the next five years.  To this end, Kappos intends to hire an additional 1,200 patent examiners and upgrade the USPTO computer systems.

In addition to discussing the average three year time frame for examination, several interesting points were addressed in the article.  One of the issues raised related to funding of the patent office.  At present, the USPTO is entirely self-financed.  In fact, funds collected by the USPTO are diverted to fund other federal budget items.  However, because the USPTO is not empowered to set (and raise) its fees, there are concerns the USPTO is not able to appropriately address the backlog concerns.

On a related note, the article included quotes from an interview with Hank Nothhaft, CEO of Tessera Technologies.  Mr. Nothfatt echos statements I have heard from other business owners and patent owners, “medium-sized and profitable companies like ourselves — we’d be willing to pay a significantly higher fee in order to fund the patent office correctly.”  According to the article, Tesserra has 850 issued U.S. patents and another 350 pending U.S. patent applications.  As further provided in the article, Tesserra derives $220 million in annual revenue from licensing about 150 patents to semiconductor industry and Nothfatt estimates the value of each patent to his firm more than $1 million a year.  Accordingly, Nothhaft says, “several thousand dollars actually, as far as patent cost to us, is relatively immaterial.”

In my experience this is not uncommon sentiment from businesses with valuable patent portfolios.  However, for smaller business and independent inventors, the cost of patents are not insignificant.  While I agree that when successfully accomplished, a patent portfolio can be vastly more valuable than the investment in patent fees and attorney costs, it is important to be confident in your patent strategy and appropriately balance the costs and benefits in building your patent portfolio.

If you would like to speak with a Chicago patent attorney about your patent matters, please contact me for a free initial consultation.

Track I:  prioritized examination
Track II:  traditional examination under the current procedures
Track III:  for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.

In addition, for applications based on a prior foreign-filed applications, no action would be taken until the USPTO receives a copy of the search report, if any, and first office action from the foreign office as well as an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO.

The proposed initiative is intended to decrease overall pendency by:

1.  increasing resources in Track I to increase output;
2.  reusing search and examination work done by other patent  offices;
3.  the belief that some applicants who chose Track III might not ultimately pursue their applications; and
4. the belief that some applicants who first file abroad will not ultimately pursue their applications in the US.

Additional information concerning the proposed initiative is provided in the Federal Register: June 4, 2010.  Public input has been requested.  A public meeting will be held on July 20 at 1:30 p.m. at the USPTO and written comments must be submitted to the USPTO by August 20, 2010.

As a patent attorney whose clients have experienced some exceptionally long pendency in the patent examination process, I am happy to see the USPTO proposing realistic actions to address the patent examination backlog.

The USPTO announced that: “To date, more than 950 requests have been filed by applicants who wish for their application to be eligible for the Green Technology Pilot Program.  Only 342 of those have been granted, primarily because many of the inventions weren’t in classifications that were eligible.  The lifting of the classification requirements is expected to allow many more applications to be eligible for the program.”

To participate in the pilot program, a patent applicant must file a petition to make special under the Green Technology Pilot Program that satisfies all of the other requirements set forth in the December 8, 2009, Federal Register notice.

As a patent attorney, I am proud to work with a number of clients who focus on innovative green technologies and other environmentally friendly and sustainable inventions.  If you are interested in learning more about the pilot program or any of the patent services I offer, contact me for a free consultation.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The court uses this language to support a written description requirement wherein the patent specification itself must demonstrate possession of the invention.  The court explains that, “while the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.”  The court also holds that the enablement requirement separately requires the patent specification enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention.

From a practical perspective the court recognizes “perhaps there is little difference in some fields between describing an invention and enabling one to make and use it, but that is not always true of certain inventions, including chemical and chemical-like inventions.”

As a result of this holding, it is as important as ever to ensure that your patent application includes an enabling disclosure that clearly demonstrates possession of the invention.  These requirements apply to all utility patents regardless of whether they start as provisional or non-provisional utility patent applications.

The various proposed reforms include, among other provisions:

• adoption of a “first inventor to file” system rather than the current “first to invent” system
  • our first to invent system tends to favor large institutions over independent inventors
  • moving to a first inventor to file system brings the US more in line with international patent laws
• additional and improved procedures for public participation in patent examination
  • the amendment expands the public’s ability to submit prior art against pending patent applications
  • the amendment provides a new post-grant review process whereby the validity of recently issued patents may be challenged
• addition of a supplemental examination procedure to enable patent owners to request review of their patents in light of new issues of patentability
  • may be used by a patent owner to strengthen a patent as it is entering litigation
  • the process will not absolve those responsible for prior misconduct in front of the USPTO from disciplinary sanctions
• elimination of the best mode requirement (thought to be duplicative of the written description requirement)

Additional provisions relate to: false patent marking issues; venue selection in patent cases; willfulness in the context of patent infringement; and the establishment of a pilot program to develop patent expertise at the district court level.

It will be interesting to see whether the time has come to implement patent reform or whether we will continue to wait as we did with respect to the proposed patent reform in the Patent Reform Act of 2006, the Patent Reform Act of 2007, the Patent Reform Act of 2008, the Patent Reform Act of 2009…

Having prosecuted a large number of design patent applications for a wide range of products, I can say these figures match my experience.  Accordingly, while design patents are generally thought to afford a narrower scope of protection than utility patents, the ease in which the typical design patent application passes through the United States Patent and Trademark Office to issuance, creates a very favorable environment for protecting your invention’s aesthetic appearance.  In industries in which a competitive advantage can be gained through product appearance, and not just product functionality, design patents can be good investments with a high rate of success.

Please contact me if you would like to discuss filing a design patent application for your invention with an experienced patent attorney.

For further information about design patents, please see these related pages:

• What is a design patent application?
• Can I file both a design patent application and a utility patent application on the same invention?

Effective December 8, 2009, the first 3,000 pending patent applications related to specifically identified green technologies for which a petition is filed are eligible to be accorded special status and given expedited examination.  The broad categories of eligible patent applications are: alternative energy production, energy conservation, environmentally friendly farming, environmental purification, protection or remediation.  The accelerated examination of these patent applications is intended to reduce the pendency of eligible patent applications by an average of one year – from 40 to 28 months from date of filing to the final decision.  Additional details regarding the program are provided in the Federal Register.

Richards Patent Law is proud to work with a number of clients who focus on innovative green technologies and other environmentally friendly and sustainable inventions.  If you are interested in learning more about the pilot program or any of the patent services I offer, please contact me for a free consultation.

• Can I patent my invention?
• What type of patent application should I file?
• What are the stages of the patent process?
• How much does a patent cost?

I hope that the answers provided are useful to those interested in the patent process.  If you have specific questions for me or would like to see additional questions answered on my website, please let me know.  If you are interested in protecting your own inventions, feel free to contact me for a free consultation.  I would be happy to meet with you to discuss your matters and help you formulate an appropriate plan for protecting your inventions.