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.

In its first issue, Ronald Jaicks of the Office of the Solicitor, wrote an article entitled Protect Your Innovation: Avoid Scams.  There are numerous horror stories about inventors working with less than reputable invention promotion companies, many lawsuits filed against various scam companies, and the like.  In this article, Jaicks lays out three steps inventors should take before signing up with an invention promotion service.  With the number of inquiries I receive from inventors and clients regarding invention promotion or invention development companies, I believe it is worthwhile for every inventor to follow Jaicks’s advice:

1.  exercise your legal right to receive telling information from companies offering invention promotion services¹;

2.  visit the USPTO’s website for scam prevention to obtain additional information on scam prevention, including a list of published complaints against invention promoters and a link to the Federal Trade Commission’s website where you can learn if a particular company has been investigated or fined; and

3.  search the invention promoter’s name on the Internet and see what turns up.

In my experience, inventors will be best served by doing their homework before dealing with any invention promotion service.  My thanks to InventorsEye for laying out the appropriate plan for inventors to follow to do their research.

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1.  The American Inventors Protection Act of 1999 requires invention promoters to disclose the following information to a customer in writing, prior to entering into a contract for invention promotion services: (1) the total number of inventions it evaluated for commercial potential in the past five years, as well as the number of those inventions that received positive evaluations and the number that received negative evaluations; (2) the total number of customers with whom it contracted in the past five years, not including customers who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter; (3) the total number of customers known by it to have received a net financial profit as a direct result of the invention promotion services it provided; (4) the total number of customers it knows to have received license agreements for their inventions as a direct result of the invention promotion services it provided; and (5) the names and addresses of all previous invention promotion companies with which it or its officers have collectively or individually been affiliated in the previous ten years. (see pages 83 and 84 in the linked Act)

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.

Here is a link to the Bilski v. Kappos transcript as provided by the Supreme Court on their website (click here for the source page).  Interesting quotes that jump out at me immediately are:

Justice Sotomayor:  “No ruling in this case is going to change State Street.” (page 30)

Chief Justice Roberts:  “Mr. Stewart, I thought I understood your argument up until the very last footnote in your brief. And you say this is not –simply the method isn’t patentable because it doesn’t involve a machine. But then you say but it might be if you use a computer to identify the parties that you are setting a price between and if you used a microprocessor to calculate the price. That’s like saying if you use a typewriter to type out the — the process then it is patentable. I — I — it — that takes away everything that you spent 53 pages establishing.”  (page 33)

One of my favorite exchanges was the discussion with Mr. Stewart, the Deputy Solicitor General, speaking on behalf of Kappos, regarding how the USPTO would have come out on the State Street Bank patent given the current proposed patent eligibility test.  (pages 43-46)  The conversation begins with the question from Justice Kennedy:

Justice Kennedy:  “How would you come out in the State Street case today, if all of the arguments were made under your test?”  (page 43)

The conversation proceeds to the logical conclusion of the machine-or-transformation test, wherein using a computer to carry out business method instructions would make eligible and otherwise ineligible process:

Justice Breyer:  “All you do is just have a set of instructions for saying how to set a computer to do it. Anyone can do that. Now, it’s a machine. So all the business patents are all right back in.” (page 46)

Finally, as Mr. Jakes (representing Bilski) notes in his rebuttal on page 51, “To speak briefly about the State Street Bank case that was a type of business method that was implemented on a machine. The Federal Circuit said it didn’t matter. They weren’t looking at whether it was in machine form or method form. Their reasoning would have applied the same either way, and to do otherwise would be to place form over substance. And in a sense, that’s what some of the transformation debate is about. It’s form over substance. Why should transformation be the key? The key should be: Is it a practical application of a useful result?”

Thank you Mr. Jakes.  You have very clearly stated a position I hope is adopted by the Supreme Court in their decision; to rely on the machine-or-transformation test is purely placing form over substance.

The backlog of patent applications is often cited as a major contributing factor to the delay in patent examination at the USPTO.  According to information published on the patent law blog Patently-O, in a review of public information available for eight thousand randomly selected patent applications filed between 2001 and 2006, the time between the filing of the patent application and the first substantive response from the USPTO was approximately two years.  The USPTO is looking for creative ways of dealing with the ever growing backlog of unexamined patent applications and it will be interesting to see if this new pilot is effective in both in reducing the patent application backlog and in providing faster examination for the targeted applications.

The kids section of the USPTO website includes news and events as well as links to resources for kids and teachers.  For example, there is a link to the USPTO’s Intellectual Property Curriculum designed to help teachers educate their students about patents, trademarks and copyrights and respecting others’ intellectual property rights.  The curriculum includes content for three different instruction levels designed for upper-elementary, middle, and high school students.

There is also a link to a Kids’ Pages section with games, puzzles and other fun pages, such as the Trademark Soundex where you can listen to audio trademarks.  Really fun.

Lastly, the For Kids section links to InventNow.org, a third party website aimed at kids with unique content aimed at teaching and encouraging kids to explore inventions and creative problem solving.  The InventNow website is an interactive playground for young inventors and could keep me occupied for hours.

To the best of my knowledge, the For Kids section is not new, but tonight was the first time I found it thanks to the redesigned layout.  I am happy to have found these resources and hope that my post helps more people find and enjoy these pages.