Intellectual property strategies and the US Patent and Trademark Office

GLOBAL REFERENCE GUIDE INTELLECTUAL PROPERTY 2011

NORTH AMERICA

Intellectual property strategies and the US Patent and Trademark Office

by Norman Sims | The Dobrusin Law Firm PC

Business investment in technology is costly and risky. Proper intellectual property strategies and tactical manoeuvres can reduce this risk. Two years ago it was difficult to secure intellectual property protection in a timely manner due to administrative policies of the US Patent and Trademark Office (USPTO). Patent allowance rates were diving toward 40 percent, the time from filing of patent applications to the first office action was twenty seven months, and patent pendency was almost three years. Under the leadership of David Kappos the USPTO has taken and proposed a variety of actions and administrative solutions to address these issues. Businesses must now update their intellectual property strategies to accommodate.

At the time of writing, the USPTO website shows that the allowance rate of patent applications filed, without accounting for the results of applications for which Requests for Continued Examination have been filed, is 45.2 percent. The more representative number is the allowance rate after accounting for the results for patent applications in which Requests for Continued Examination have been filed. This rate is 62.4 percent. There are many factors that have impacted this rate. One significant factor is that the USPTO has emphasised the importance of interviews with applicants and their attorneys. We has always emphasised interviewing examiners to seek common ground to advance applications to issue. Recent experience shows examiners are more willing to grant and actively engage in interviews and are more willing to initiate interviews. An open, honest and respectful approach to interviews can resolve many issues and accelerate final disposition of patent applications. In the last two years we have seen an increased willingness of examiners to identify in office actions subject matter that they believe is allowable. In 2010, we experienced an increased number of allowances of patent applications as a result.

The USPTO has implemented a number of programs to accelerate examination including the Green Technology Program and the patent prosecution highway. Additionally, a program to allow patent applicants to pay a fee to accelerate examination has been proposed but not implemented. The present proposal is for a fee of between 4000 and 4800 dollars to accelerate examination. For well funded businesses this is realistic. For businesses with funding challenges this may not be an option.

The Green Technology Program allows patent applicants for technology generally related to alternative energy or energy conservation to file a petition for accelerated examination. If a petition is granted the application is placed immediately at the top the examiners active docket. Only 3000 applications will be taken into the program. As of February 2011, 1215 applications have been accepted into the program. To take advantage of this program a petition must be filed with the patent office along with a petition for early publication of the application and the fee for early publication. Even if an application has been published the early publication fee is required. The program requires that applications contain no more than three independent claims and twenty total claims. If an application has more than three independent and 20 total claims a preliminary amendment is required. Once an application is accepted and the USPTO determines that the application contains more than one invention the applicant must elect one invention and cancel claims to any other inventions without protest. Applicants must timely file responses to outstanding office actions without taking any extensions.

If a petition filed under the green technology program is denied, the applicant has one opportunity to correct any defects. Once granted, the examiner examines the application within three to four months. The examiners carefully examine the applications for more than one invention and quickly request that the applicants elect one invention to prosecute and cancel claims to the nonelected inventions. Within three to four months after the election a first office action is issued. This process takes less than a year from filing of the petition to first office action. New applications and petitions are required for the inventions not elected. Based on our experience, the Green Technology Program has advantages for certain clients and disadvantages for others. Businesses must determine if this program is appropriate for their needs.

EDITED VERSION

This article has been edited to comply with our Editorial Guidelines, which include UK spelling and grammar, and specific house styles for consistency.