Modern Times Legal Patent Blog

USPTO Goes Wiki

USPTO Director David Kappos is on a role. On his Director's Blog today, he writes about his ideas for taking the Manual of Patent Examination Procedure (i.e., what might be viewed as the bible for US patent examination) open source. Perhaps we all can soon become co-authors of a much more dynamic MPEP.

I provided a couple comments on the blog, in particular advocating for including links for case citations to the actual court decisions, preferably in citation-friendly form to perhaps avoid the need to pay extortionate fees to obtain recognizable citations to the decisions from our nation's courts. I also commented on how I liked the intriguing interplay and juxtaposition both (a) between the proprietary rights of patents and open-sourced knowledge and (b) between the government and the people. Sounds like great fodder for a compelling article in Wired, no?

David Kappos Talks About His Initiatives to Change US Patent Practice

A Surprise Encounter with the USPTO Director

This past Friday, the Boston Patent Law Association provided me (above left) with a special treat--an opportunity to join USPTO Director David Kappos (above right) for breakfast across the street and a few doors down from my office. But what really surprised me was when Director Kappos approached a colleague and me from behind to introduce himself and initiate a friendly chat. We had not previously met; Director Kappos was just being himself--remarkably open and cordial.

While President Obama has been criticized for a number of failings in his first term, I try to reserve my judgment to the areas I know well. The functioning of the USPTO is one such arena, and here Obama hit a home run when he appointed David Kappos as USPTO Director. He clearly knows the patent system from all perspectives, and he is an exceptional listener. He asked to hear our thoughts, and he clearly valued our opinions. He seemed more than happy to chat with us for all the time he had available.

Promoting Uniform and Compact Prosecution 

One of the first questions I asked Director Kappos, after noting the great variability in examination standards across USPTO art groups, was whether he had ideas for promoting better uniformity and consistency across examiners, particularly in some art groups with very low allowance rates. Without pause or prompting, Director Kappos reflected on the story of the examiner who refused to enter an Amendment due to a mistake with a period at the end of a sentence (I urge you to read the story, originally posted by Greg Aharoninan and commented upon here by a USPTO examiner, if you haven't already). In his own words, Director David Kappos emphasized that this type of examiner behavior is "garbage," and he is determined to try to stamp it out.

Director Kappos noted that changing the culture, aligning priorities and establishing consistency across an institution as big as the USPTO were big challenges. While others might gravitate to a top-down approach, his approach is bottom-up. "You start where the action is, and that's with the examiners." Accordingly, Director Kappos regularly meets with examiners face-to-face and often one-to-one. If my conversation with David Kappos is representative, I am confident that each of these conversations produces a wealth of bi-directional sharing of information and understanding. In addition to establishing these personal connections with examiners, Director Kappos indicated that he is working to provide much more training and guidance to examiners. Likewise, Director Kappos reported that his approach with managers is to focus on how they can best help the examiners and to encourage managers to mentor examiners in achieving "compact prosecution" (i.e., quickly and proactively getting to the heart of issues in examination and thereby streamlining prosecution). Moreover, by further increasing the skills of examiners, he believes they are more likely to stay around and not leave the USPTO.

Director Kappos also noted that the feedback that he is receiving from applicants and their attorneys indicate that these efforts are starting to bear fruit. In particular, he noted that he has already received word of appreciation from many attorneys who have surprisingly received telephone calls from examiners proactively reaching out to try to resolve patentability issues. At one point, Director Kappos specifically commented that "it is our job to help." Words like these are refreshing, as we have not seen that level of top-down commitment to customer service at the USPTO in nearly a decade.

Patent-Term Adjustments under Wyeth

The recent decision from the US Court of Appeals for the Federal Circuit in Wyeth v. Kappos changed the way the USPTO calculates patent term adjustments. Professor Dennis Crouch recently outlined the calculation algorithms and the process for requesting recalculation from the USPTO on his PatentlyO blog, so I will not rehash those topics here.

Director Kappos confirmed that the USPTO is accepting requests for patent-term adjustments under Wyeth; and no fee or petition is required, just a worksheet. You need not even calculate the numbers yourself; just ask the USPTO to do it for you. Interestingly, Director Kappos noted that he considers it to be an "open question" as to whether the USPTO can help patentees who did not file a request for adjustment and are now past the 180-day window post grant for requesting adjustment. He suggested that he thinks the USPTO lacks jurisdiction, though some in the audience offered suggestions for different bases of authority for stretching this limit, and Director Kappos indicated that he would continue to review the issue in view of those suggestions. Nevertheless, in view of the doubts as to whether a remedy can be granted by the USPTO more than 180 days after patent issuance, Kappos emphasized that it is critical that you make some sort of filing to request adjustment before expiration of the 180-day window if you want a review and possible adjustment of the term calculation for recently issued patents.

Director Kappos has indicated that he expects that the USPTO software for calculating patent term adjustments will be reconfigured to accord with the Wyeth decision by March 2, 2010. With delays from the time of issue fee payment to grant, patent term may be correctly calculated by the USPTO at the time of grant if you can wait another couple weeks to pay an issue fee (and you may even be in the clear in terms of a correctly calculated patent term adjustment with an issue fee paid today if the lag from issue-fee payment to patent issuance is more than a month). In the end, you need to talk with your counsel to find out if you should file a request for patent term adjustment on any recently issued / soon issuing patents.

A Five-Year Strategic Plan That Will "Actually Get Executed"

Director Kappos also reported that he is working on a new comprehensive five-year strategic plan for the USPTO. He acknowledged that his plan is not very different from the strategic plan of the previous administration, including objectives, such as decreasing pendency, increasing quality, exercising global IP leadership, and engaging with the applicant community. The difference, Kappos reported, is that he intends for it to be executed, as he intends to produce an extremely detailed slate of initiatives and deliverables, which will be made public.

"Coming from industry, I'm used to strategic plans that actually get executed," said Kappos. With accountability built in, he expects his plan will make some people uncomfortable. Names will go on the chart, pegged to scheduled deliverables; and they'll see yellow and red on the chart when dates are not met.

Increasing the US Patent Allowance Rate

I reported previously on this blog about Director Kappos's efforts to change the "rejection mentality" at the USPTO, a mentality that produced the plunging patent allowance rate at the USPTO. Further acknowledging the perverse incentives for examiners under the previous administration, Kappos noted that examination results were naturally skewed under a system in which if you (as an examiner) allow applications "bad things happen"; while if you reject, "nothing bad happens." The early results from Kappos's initiatives, which will include changes to the examiner "count system," already show an increase of multiple percentage points in the US patent allowance rate.

Director Kappos further reported that the increase has been reported to be as high as 5.4%, though it may be closer to 3% if you include Requests for Continued Examination (RCE's). My understanding is that RCE's have previously been counted as non-allowances in calculations of USPTO allowance rates, and I include them when I calculate my own track record. Consequently, I believe that the ~3% increase in allowances is the proper metric. Moreover, Kappos suggested that he believes that the allowance rate "will probably go up more with the new count system," as examiners are incentivized to actively engage with applicants. For the long term, Kappos stated, "I would like to see the allowance rate go up and to see quality go up at the same time."

Examiner Interviews

Director Kappos reported that the USPTO's Pre-First-Action Interview Pilot Program has thus far worked "extremely well." Kappos further stated that "first-action allowance is up something like 600%" under this pilot program. Accordingly, you can use these pre-first-action interviews to obtain patents much more quickly and efficiently. The Pilot Program is still only offered in a very limited number of art units at the USPTO; however, Kappos's pride over the success of the program suggests that it may eventually become available to all applicants (if and when that happens, I will certainly report it on this blog).

Director Kappos also wants examiners to reach out to applicants at all times in the process, including before first actions, after "final" actions, after notices of appeal, etc. Further regarding interviews, Director Kappos directed us to a resource of which I was not previously aware: the USPTO Examiner Interview Training Course Materials, which are available on the USPTO website and which I believe will be likewise quite helpful to prosecuting attorneys. Director Kappos indicated that he intends to post all examiner training materials to the public. Bravo! Part of the USPTO's mission is to disseminate knowledge; so it is great to see Director Kappos finally advancing this goal (unfortunately, I forgot to ask him why the USPTO still does not provide downloadable PDF copies of US patents, though he answered that question indirectly when he discussed not being able to upgrade the USPTO's IT infrastructure due to insufficient funding from Congress, as is further discussed below).

Green Technology Accelerated Examination

I posted earlier on the USPTO's accelerated patent examination program for "green" technologies, so I will not rehash the details here. Though Director Kappos indicated that about 600 requests for participation have thus far been filed against a cap of 3,000. Director Kappos also explained that the cap was imposed because the examiners' union was concerned that examiners might be overloaded if there was a flood of participants.

I asked Director Kappos whether he expected the program to be renewed so that applicants who file now could be eligible to participate. Director Kappos noted that the reason why the program was targeted only to already-filed applications was that he was concerned about changing applicant behavior, which I interpret to mean that he suspected that applicants may shift the target or focus of patent applications toward green applications to bolster their likelihood of being accepted into the program. That suspicion seems not unreasonable given the comparative risks and burden of the standard accelerated examination program requiring an Examination Support Document. Nevertheless, Director Kappos indicated that if they reach the 3,000-participant cap, then a forward extension of the program (accepting later filed applications) is certainly possible.

"Bump and Dump"

Commenting on the USPTO's "Bump and Dump" program, officially cited under the less-catchy moniker, "Patent Application Backlog Reduction Stimulus Plan," Director Kappos indicated that he was positively surprised that about "fifty-ish" small-entity applicants have thus far abandoned a patent application to subject another of their applications to accelerated examination under "bump and dump." This comment suggests that the USPTO never expected this program to have a particularly significant impact. And if you search "bump and dump," you will find some off-color definitions (I am not sure who first associated it with the USPTO's program), though it appears the name has firmly attached to this USPTO initiative both outside and inside the USPTO.

Ideas for Delayed Examination and Different Examination Tracks 

Director Kappos pointed out that a delayed examination framework (as is available, for example, in Japan and Canada) would present an effective means of weeding out patent applications that are no longer of interest when examination begins without wasting examination resources. Currently, a US applicant pays filing, search and examination fess up front at or near the time the application is filed, so there typically is little motivation for an applicant to proactively abandon an application. If the applicant can wait until a later date (two years perhaps?) to pay the search and examination fee, Director Kappos indicated that 10-20% of filed patent applications would go abandoned on account of applicants' failure to later pay those fees. Director Kappos noted, however, that a delayed examination procedure was no more than an idea at this point and is not (yet) being pursued by way of USPTO rule-making.

Additionally, Director Kappos pitched the idea of establishing a three-track examination structure, wherein "queue one" would be for applicants who want a patent within a year and who are willing to pay higher fees; "queue three" would be super slow--like the PCT he said (though this comment confused me as a PCT Search Report is at least supposed to be issued 18 months after the earliest filing date, which is often faster than the USPTO issues a first action on US applications); finally, applications in the middle track would be processed just like the bulk of applications now are processed. Again, Director Kappos indicated that this framework was only an idea at this stage, though he commented that it "would not be that hard to do."

Patent Prosecution Highway and Cooperation Between Patent Offices

The Patent Prosecution Highway (PPH) refers to a series of agreements between the USPTO and foreign patent offices for fast-track examination (in my limited experience, the PPH track has not been particularly fast and one can obtain most of the same benefits via the filing of Information Disclosure Statements citing foreign prosecution). Director Kappos indicated that the average number of Office Actions for an application in the PPH is 1.7, while the average among all applications is 2.7 office actions, though I think it is reasonable to expect such a difference based simply on the fact that another examiner already held the claims to be allowable (i.e., the claims are more likely to be objectively patentable merely by virtue of the allowance of a foreign counterpart application).

Director Kappos stated that he wanted to "back up" from the PPH focus on allowances in foreign counterpart applications. Director Kappos indicated that he is not as interested in allowances as he is in the initial search report and office action. As is to be expected, the USPTO will conduct its own examination, though US examiners can surely benefit in many cases from seeing a foreign examiner's search report and interpretations. I agree with this assessment (analogously, if a new client transfers in a case to me for which the previous attorney provided at least an initial draft of the application, I certainly want to see what ideas the other attorney had for claims and leverage as much of his/her work as I can use to fit within my own framework). That approach just makes sense from an efficiency perspective.

To facilitate taking advantage of the efficiencies of leveraging the work of foreign examiners on counterpart applications, Director Kappos signaled an intent to build the familiarity and trust between US examiners and European and Japanese examiners that will facilitate information sharing between examiners in the different offices and the resulting examination efficiencies and potential quality enhancements.

Patent Reform Legislation

Commenting on Senate Bill 515, the Patent Reform Act of 2009, Director Kappos indicated that, in his opinion, the bill--while not a panacea and not his favorite piece of legislation--is good legislation, on balance. Kappos indicated that he believes it resolves some major harmonization issues, including first-to-file. He also likes the "rationalized" post-grant reexamination provisions, and he thinks the damages language is the best compromise we are going to get.

From the audience, however, David Boundy pointed out that the redefinitions of prior art under the amendments to 35 U.S.C. 102 to accord with a first-to-file priority framework would significantly weaken existing prior-art grace periods with respect to pre-filing disclosures made by anyone other than the inventors. Director Kappos indicated that he had not heard this concern before but indicated that he would reread the text from this perspective.

The Bad News:  USPTO Funding

The "really bad news" according to Kappos, however, is the USPTO's dire funding situation. With congressional appropriations capped to match last year's reduced revenues, the USPTO now faces expropriation of excess applicant fees and an inability to use those fees to pay for much-needed upgrades in IT infrastructure and examiner hiring. Due to this lack of funding, Kappos is now scrambling to put the brakes on new USPTO programs.

Kappos indicated that the appropriators and the administration "get" that this is a serious problem and want to help, though securing a funding increase through the legislative molasses is not easy. Meanwhile, the USPTO is losing 35 people per month and cannot replace them. As a consequence, US patent pendency is going to increase again this year for those who do not /cannot take advantage of the various accelerated examination platforms.

Finally, I encourage any of you with an interest in US patent practice (and surely you have a strong interest if you read this far) to take advantage of any opportunity you may find to meet or listen to David Kappos. As long as this post was, I only captured a smattering of the wealth of ideas and insights he so graciously shared. My own patent practice will certainly be smarter for having benefited from those insights.

Great Tool for Improving the Quality of Patent Applications

In my patent practice, I focus intensely on optimizing the quality of patent applications that I draft. In large part, I define quality in terms of being well-written and free of errors and compromising language. If these objectives ring true for you, as well, imagine the value if you could stuff an expert patent proofreader into your laptop.

With the ClaimMaster software program, you can do just that. ClaimMaster is an add-on for Microsoft Word with a wealth of features ranging from checking consistent use of reference numbers and terminology, evaluating claim format, identifying potentially compromising language, etc. I first started using ClaimMaster in September of 2009, soon after it was released, and I have consistently found it to be a great value at a price that is less than one hour of an experienced patent attorney's time.

Of course, it is still up to the patent attorney to draft a compelling patent application with well-crafted claims. I view ClaimMaster as a safety net that can reliably save me from many potential missteps. I have practiced long enough to be confident in my work, though, of course, my first draft, in particular, is not likely to be ideal. I will still proofread my work, though ClaimMaster can do a great job cleaning up my application starting with the first draft.

ClaimMaster benefits the client as much as the attorney. The client benefits because he/she can obtain a more-polished patent application in a shorter period of time (translating into lower cost). A more-polished application at the time of filing can also result in a stronger, more-quickly issued patent.

In addition, when I have run into problems with ClaimMaster, Dmitry at ClaimMaster has been very responsive in providing fixes. It is rare to find that level of responsiveness, service, quality and value in a tool for attorneys, though ClaimMaster provides it. With better-quality patent applications, everyone wins, particularly the client.

I received no incentives and have no stake in praising this product. My only motivation is to share this tool the same way I share any tool or tactic for optimal patent prosecution on this blog. If, as an applicant or attorney, you want an optimal patent (who doesn't?), I think your patent applications will surely benefit if they are parsed by ClaimMaster before being filed.

Welcome 2010: Challenges and Opportunities in Patent Practice

Barack and Michelle Obama celebrating the holidays at the White House with Edith Childs, via the White House photostream on Flickr.

What a year 2009 was.  Let's take a quick look back.

Economic Crisis 

First, the world economy crashed due in part to "financial engineers" who took on too much risk and left the public holding the bag. That said, chaos always creates opportunity. The bottoming out of the financial markets in March presented what may have been a once-in-a-lifetime opportunity for cool-headed, disciplined investors to snap up extraordinary bargains in the face of a mass, popular exodus from the markets by the herd. Savvy, rational opportunists, which characterizes many inventors, capitalized on the panic of the masses.

Likewise, the financial crisis created opportunities for nimble and disciplined businesses (both among law firms and technology companies) to capture more market share.  Modern Times Legal saw a bit of a slowdown in the first half of the year, though business has bounced back strongly the past couple months, as the firm recently added at least three value-conscious clients who have transferred their work to Modern Times Legal from much higher-priced firms in the city.

Likewise, I see lots of companies who were not over-extended staying focused and capturing market share as competitors floundered. Here at Modern Times Legal, I will add no more than an approximately inflation-matched adjustment to my billing rate for the coming year as I recognize that budgets remain tight, and I have found some new ways to further reduce expenses so as to allow clients to maintain their own fiscal discipline.

Changes at the USPTO

I have tracked positive changes at the USPTO, largely attributed to the appointment of new USPTO Director David Kappos earlier this year, via a series of posts on this site (in particular, those titled, "Changes are Coming to the USPTO").  Operations at the USPTO are now gradually rising from a low point that left many applicants in despair, and I am very optimistic that we will see continued improvement at the USPTO in terms of transparency, efficiency, and fairness.

Key takeaways are that skilled legal advocacy (particularly with respect to establishing non-obviousness), interviews with USPTO examiners and the establishment of personal rapport are of increasingly critical importance and value in terms of improving your likelihood of securing an allowance in a chaotic and ever-shifting environment; and applications, as filed, now need to be more skillfully drafted than ever before.

While the patent allowance rate at the USPTO still remains plunged below the depth of 50%, I was proud to achieve an allowance rate over 80% (i.e., of the patent applications that I drafted and prosecuted for clients, over 80% of those that reached a final disposition were allowed, which has helped those clients to advance their business; and, in some cases, has even helped to bring life-saving technologies to the market).  We will need to wait at least for the Bilski decision from the Supreme Court to learn how software and business methods will be treated at the USPTO (including the troubling innovations of financial engineers who contributed to our plunge into a deep recession); though for most technologies, I am confident that fewer applicants will face unreasonable rejections at the USPTO if prosecution is managed proactively--for example, by taking advantage of opportunities to make it easier for an examiner to confidently allow claims.

Challenges Ahead

We still face plenty of challenges--from righting our economy and combating climate change to continuing to boost the quality of operations at the USPTO back to an acceptable level, though I think we now have substantially more reasons to be optimistic than we did at the start of 2009; and all of these challenges likewise present opportunity.

A Successful Year for Modern Times Legal

No longer a fledgling new practice, Modern Times Legal crossed a threshold as it entered its third year. Modern Times Legal received a boost in this downturn, picking up at least a dozen new clients ranging from massive multi-national corporations to solo inventors (thanks to all of you, new and old). As the firm maintains a low overhead, I was able to resist any rate increases, and Modern Times Legal was accordingly able to adapt to and ease the pinch felt by fiscally conscious clients; and in some cases, limiting my rates and charges allowed Modern Times Legal to increase the share of work received from large clients who distribute their work among a multitude of firms. Nevertheless, I still have some extra bandwidth, and I welcome and very much appreciate the referrals for new business that many of you provide.

Modern Times Legal also continued to cement its international footprint, as I returned as an instructor for the World Intellectual Property Organization to teach another patent-drafting workshop for participants from across Africa at the headquarters of the African Regional Intellectual Property Office in Harare, Zimbabwe in October (watch for a new video coming soon on this site). Moreover, I accepted an appointment as Pro Bono Chair of the Boston Patent Law Association; and I am proud to join the leadership ranks of this esteemed organization within the patent law community.

I also upgraded my office space--as I moved to the "Inman Square" sector on the 14th floor of the Cambridge Innovation Center; and I am now in the office nearly every day versus previously splitting time between the CIC and my home office over the past two years. With a near-paperless practice, I still maintain a small and modest footprint (no sprawling marble floors or huge oak desks), though I am now more readily available, even on short notice, for a face-to-face meeting at or near the office whenever needed.

Thank you to all subscribers to this blog; at present, I do not track the identity of RSS subscribers, so I lamentably do not know who all of you are, though I invite you to please post comments (or send me an email) and let me know what you think.  I currently have a list of about twenty topics on which I want to post, so there is no shortage of ideas; I just need to continue to find the time, and I am committed to posting regularly, though the comments provide encouragement, and I love to hear the perspectives and insights of others.

On a personal note, 2009 was also extremely enriching, as my wife, Emily, and I added our first child, Henry (see family portrait from last month at right). He is six months old now, and I am already so proud of him.

Happy new year to all of you!

You May Now Obtain a "Green" Patent Via Accelerated Examination

Under a new United States Patent and Trademark Office pilot accelerated examination program, "green" patents can now receive a boost in examination at the United States Patent and Trademark Office. According to the USPTO, green patent applications that are accepted into the program and that are ultimately allowed will be issued by the USPTO about a year faster than without the program. The average pendency in green technology areas is approximately 30 months to a first action and 40 months to a final decision.

"By ensuring that many new products will receive patent protection more quickly, we can encourage our brightest innovators to invest needed resources in developing new technologies and help bring those technologies to market more quickly," explained U.S. Commerce Secretary Gary Locke. Adding to Locke's comments, USPTO Director David Kappos further explained why this program is needed. "Every day an important green tech innovation is hindered from coming to market is another day we harm our planet and another day lost in creating green businesses and green jobs."

Only the first 3,000 petitions will be accepted into the pilot program (and, unless extended, the program will expire no later than December 7, 2010). Director Kappos estimates that about 25,000 applications are eligible, so act fast.  Unlike the USPTO's previously existing accelerated examination program, this pilot program for green technologies does not require a dreaded "examination support document" and no separate petition fee is required.

Applications accepted into the accelerated pilot program will be placed on an examiner's accelerated docket (i.e., the examiner's "special docket") prior to issuance of a first Office Action, which should shorten the delay between filing and substantive examination, and the application will have special (accelerated) status on Appeal, if Appeal is needed.

Principal Requirements:

1. Your application must be a US non-reissue, non-provisional utility patent application filed before December 8, 2010, or the national stage of a PCT application that enters the US before that date.
2. Your petition must be filed before the examiner issues a first Office Action.
3. Your petition must be among the first 3,000 filed at the United States Patent and Trademark Office.
4. Your application must include no more than three independent claims, 20 claims total and no claims in multiple-independent format. You can amend your claims via preliminary amendment to meet these requirements.
5. Your application must be directed to a single invention that falls within one of the categories listed below, and your application must be classified in one of the 79 green technology classifications listed on pages 3 and 4 the Federal Register Notice.

Green Categories:

1. Inventions that materially enhance the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements; or
2. Inventions that materially contribute to (a) the discovery or development of renewable energy resources [including hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources]; (b) the more efficient utilization and conservation of energy resources (in combustion systems, industrial equipment, and household appliances); or (c) greenhouse gas emission reduction [including, but not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)].

Additionally, in your petition, you must pledge that, if the USPTO determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), you will agree to make an election without traverse in a telephonic interview. Your petition must also be filed via the United States Patent and Trademark Office's Electronic Filing System, and the petition to make special must be accompanied by a request for early publication (and payment of the $300 publication fee). Further still, If the application does not clearly disclose that the claimed invention falls within one of the above green categories, the petition must be accompanied by a statement signed by the applicant, assignee, or a patent attorney/agent explaining how the materiality standard is met.

The petition form provided by the United States Patent and Trademark Office is a simple one-page document.

Beyond the advantage of potentially obtaining an issued patent much faster, I see at least a couple other less obvious advantage of taking advantage of this program.  If your application is accepted into this green technology accelerated examination program, it (a) tells the examiner that you are serious about getting your green technology on the market to help save our environment and that you are anxious to obtain your patent, which can help establish a favorable rapport and (b) provides an imprimatur from the USPTO that your invention is a green technology worthy of accelerated attention to serve the nation's key goals in protecting our environment, which may impress judges, juries, investors, licensees, customers, etc.

Robert J. Sayre of Modern Times Legal has a keen interest in sustainability and green technologies and has experience in many of these fields.  Joining the USPTO in promoting green technologies, Modern Times is offering a corollary special deal for green patent applications:  Bob will gladly offer a free consultation for existing and potential new clients alike to help you evaluate whether to file a Petition for Accelerated Examination.  Contact Bob now to find out if your patent application may be eligible.

Above author's photo shows clean air and water in Finse, Norway (2008), accessible via train from Oslo to Bergen. 

Benefits of US provisional patent applications

In the United States, utility patent applications can be filed as either a "provsional" or a "non-provisional" application.  Non-provisional patent applications must meet many formal requirements and are typically subject to a lengthy examination process. In contrast, provisional patent applications are subject to few formal requirements and are never examined. Provisional patent applications also remain pending for only one year; within that one year, a non-provisional patent application must be filed to maintain the benefit of the original filing date of the provisional application.

Provisional patent applications can typically be filed more quickly and less expensively than can a non-provisional application. If, however, you are certain that you will eventually proceed with a non-provisional application, filing a provisional and then a non-provisional is typically more expensive than just beginning with a non-provisional filing. Accordingly, provisional filings may make sense if you are unsure whether you will ultimately proceed with a non-provisional filing and where you wish to minimize your upfront investment.

Beware, however, of any attorney or agent who offers to file a dirt-cheap provisional patent application for you (for example, a provisional application for less than one thousand dollars). Though provisonal applications face few formal requirements, they only provide value as a priority filing if they satisfy the rigorous patentability standards of written description, enablement, best mode, etc. Explaining the details of these requirements would require too much space for this post, though, in short, the invention needs to be described in full and exacting detail. If your description and drawings are in any way incomplete (or even if you describe the invention in the wrong way), the provisional filing may have little or no value and your invention will not be meaningfully protected.

While any registered attorney or agent can file a cheap provisional and there are numerous scams that offer to help you file your own provisional application for a modest fee (see, for example, the complaints on the "scam prevention" page on the USPTO website), you might compare it with surgery. Anyone can cut you open and remove things from inside you, but would you trust anyone to do so other than a highly qualified surgeon? And for that professional service, you will likely need to go to a hospital and pay market rates. Moreover, in most cases, you would not try it yourself unless you completed medical school. Patent law is every bit as complex as modern medicine; using one errant word can be every bit as devastating in terms of forfeiting your invention as might some hack nicking your carotid artery forfeit your life; in either case, it may well be game over.

Those warnings aside, allow me to address some of the other benefits of filing a United States provisional patent application.

First, filing a provisional patent application allows you to market your invention (which is described in the provisional patent application) as "patent pending." This claim can serves as a powerful marketing tool, and seeing "patent pending" on your product will often give pause to competitors who may want to steal your idea. Because you have locked down a filing date with your provisional filing, you may also then be able to begin marketing your invention (assuming it is fully described in your provisional filing) with reduced risk of anyone stealing your idea.

Second, if you are looking for funding or investment for your technology, potential investors will generally love to see that you are pursuing patent protection; and often a provisional filing will be enough to satisfy them that you have taken adequate initial steps to protect your technology.

Third, provisional filings allow for up to an extra year of US patent term. An issued US utility patent is valid for 20 years from the earliest non-provisional filing date. Consequently, you can file a provisional patent application today and then wait one year before filing your non-provisional patent application. Your priority date will be today (if you fully describe your invention in the provisonal), though the clock on your 20-year patent term will not start ticking until November 2010.  The "priority date" is important because it determines what can be asserted as "prior art" against your invention.

Fourth, provisionals can be very valuable when you are still engaged in R&D and your technology is still evolving. You can have a provisional application filed today to cover the core idea; and then, assuming you generate new ideas and improvements over the next year, those new ideas can be added into your subsequent non-provisional filing. In the non-provisional filing, your broadest claims my be supported by your provisional patent application, and thereby be entitled to the priority date of the provisional filing, while your non-provisional application can also include more specific claims directed to your later improvements that may not have the benefit of the original provisional filing date, though which may still be patentable.

Fifth, even with the best of intentions, emergencies happen where a disclosure of an invention may suddenly become imminent. A provisional filing can be made (often same-day) covering as much as possible within the time avialable. While there often will be risks that the disclosure in the provisional application will not be sufficient, at least you can preserve a chance to obtain patent protection; and a skilled patent attorney may be able to work wonders even with just a few hours.

Sixth, if you do not follow up with the filing of a non-provisional patent application, your provisional patent application will go abandoned and can remain secret forever. Consequently, you may be able to allow your provisional patent application to lapse and then rely on trade secrecy with no one ever learning of the details of your invention.

Any legal advice as to whether you should file a provisional patent application obviously is very fact- and context-specific; and you should talk with a qualified patent attorney to assess the right choice for your situation. Additionally, this post really only scratches the surface regarding provisional patent application, though I hope it offers some useful information.

Relatedly, if you wish to see typical costs for provisional and non-provisional patent applications and the various stages of patent examination and patent maintenance, you are welcome to obtain my free report on typical patent costs.

USPTO Director David Kappos's blog is now public!

Good news: the blog of USPTO Director David Kappos is now public.  I had previously referenced his blog, when access was limited to United States Patent and Trademark Office employees, in earlier posts about changes at the USPTO.

Though Director Kappos's first public post does not include any profound new announcements, I expect that, going forward, he will use it to inform us of new USPTO initiatives and the rationale behind his policies.  Doing so will definitely signal a change of operation and communication from USPTO management, and I expect it will help to improve relations both between the USPTO and applicants and between the USPTO and the broader public.  Director Kappos's blog allows for comments and even includes an RSS feed.  Although RSS permeates nearly all corners of the internet, the USPTO had thus far hid from it.

Accordingly, Director Kappos's public blogging and use of syndication for communication are additional positive signs of openness and transparency.  Check it out and stay tuned.

Stay tuned as well to see how the USPTO announcement that it will provide its data to Google for dissemination will play out.  I enjoy using a wide variety of Google services and am generally quite pleased with the quality, so I am optimistic that Google can help make patent data more accessible, particularly since the USPTO until now has refused to even provide PDF copies of US patents via its website, which has been contrary to its mission to disseminate information. 

Hat tip to Professor Dennis Crouch for the announcement regarding the public accessibility of Director Kappos's blog.

Changes Coming to USPTO--Part VI: Rejection Mentality and Work Sharing

Just_n_Examiner from the USPTO is doing a fine job keeping us posted with inside perspectives on changes at the USPTO under new Director David Kappos (left). In yesterday's post, the Examiner relayed some of the latest posts from Director Kappos's internal blog at the USPTO.

The following two reported points from Director Kappos will be of particular interest to patent applicants.

Reversing the Rejection Mentality 

First, Director Kappos offers more insight as to how he will change the "rejection mentality" at the USPTO, which has led to the dramatic plunge in US patent allowance rates over the past few years.  When listing important benefits of changes that have not yet received much notice, Kappos reportedly cited:

"Reducing examiner reluctance to allow applications. Due to low allowance rates in certain areas, Primary Examiners have less margin for error since their PAP [Performance Appraisal Plan] has an error rate standard. Since the error rate is based on the number of applications allowed, if very few applications are allowed only one error may take the employee out of the 'Fully Successful' rating level. The change provides that an examiner won't be penalized performance-wise based upon a single clear error in Patentability Determination."

In other words, US Examiners no longer need worry about receiving a poor performance appraisal on the basis of allowing a single patent application with which a reviewer may disagree. My prediction:  this small change has the potential to trigger a significant shift away from the frequent reluctance of some US examiners to allow patents. I will aim to continue posting charts of the US allowance rate, such as the one linked to above; and I hereby forecast that the curve will soon change direction and shift back upward.

Promoting Access to Examination Results from Foreign Counterparts 

Second, Director Kappos elaborated on the administration's opposition to the "sovereign function" language in the current patent reform legislation, which would would block the US from participating in worksharing initiatives with overseas patent offices. Director Kappos reportedly indicated:

"[W]orksharing should not be confused with taking examination responsibility and decision-making away from US examiners. Worksharing does not take examination responsibility or decision-making away from US examiners; it provides US examiners with another tool, like all the other tools we use, to enable our examiners to do the best possible job in examining applications having foreign counterparts."

And I think that Just_n_Examiner gets it exactly right when he/she says:

"The thing that has struck me about the whole Patent Prosecution Highway from the start is the fact that all this seems to do is to facilitate what you'd think examiners would be doing anyway.

If you're examining an application, your search would likely uncover any related applications, whether they are US or foreign applications (at least the major Patent Offices), and once found, it certainly makes sense that you'd want to check out the art that was cited by the examiner during prosecution in those foreign patent offices."

In short, expect the USPTO take more initiative in leveraging the search and examination results from foreign counterpart applications.  I have found that leveraging a strategy of directing the examiner's attention to favorable rulings as to the patentability of related foreign applications examined by the European Patent Office, by the Korean IP Office, by the UK Patent Office, etc., to be very successful in securing allowances of US patent applications. As the US institutionalizes these practices, I expect there will be even more opportunities to benefit in the way of obtaining expedited allowances of claims that meet the basic requirements of patentability; and US patent examination, overall, should be executed more efficiently and expeditiously, which may help to reduce the increasing backlog of US patent applications still awaiting examination.

As always, I invite you to contact me to discuss how these and other strategies may help to secure patents for your institution. 

Return visit to African Regional Intellectual Property Office (ARIPO)

Sorry that this blog has remained quiet for the past couple weeks--I have been in Africa.

Most American (or European, Japanese, Chinese, etc.) patent attorneys have never filed in Africa, though they should keep an eye on the continent, as patent filings are increasing at the African Regional Intellectual Property Office (ARIPO), even through the recession, while filings in America and in other developed markets have dropped.

Without many patent agents in ARIPO member states (e.g., there are just four patent agents in Zimbabwe), a critical need exists for patent drafters who can help to monetize innovation from African research centers, universities and other institutions. This past year, about 500 patent applications were filed at ARIPO (one of two regional patent organizaions along with French-speaking OAPI), though the overwhelming majority of those applications were filed by applicants from non-member countries, particularly from the United States and particularly directed to, for example, pharmaceuticals.

In the annual joint effort of the World Intellectual Property Organization (WIPO) and ARIPO to build patent-drafting capacity in Africa, I again participated this past week as a patent-drafting instructor. After traveling to Addis Ababa, Ethiopia last year, this year we returned to the ARIPO headquarters in Harare, Zimbabwe with a new group of participants, this time from the following countries: Burundi, Ghana, Liberia, Mauritius, Namibia, Rwanda, Sierra Leone, Seychelles, Swaziland, and Zimbabwe. The program included a series of presentations discussing patents and patent-drafting concepts, as well as a series of practical patent claim-drafting exercises. Again, the students were highly committed and made remarkable progress in picking up concepts and skillfully employing claim drafting techniques in just one week.

Again, it was refreshing to meet high-ranking government officials, including the chairwoman of the council of ministers from Lesotho, who fully recognize that a strong intellectual property system is critical to investment and that skilled patent drafting is a critical need in that regard. African leaders recognize that a strong patent system is often needed to introduce new products to a country both from within as well as from outside the country's borders, as many companies will be afraid to enter a market if their innovations cannot be protected. I say "refreshing" because so many anti-patent interest groups in America today have forgotten or refuse to acknowledge this truth.

Patenting at ARIPO can cover 15 member states across Africa, and rules and procedures are governed by the Harare Protocol. As with European patents, ARIPO patents must be validated after issuance in the member states in which protection is sought. Patent rules in Africa mostly resemble European practice (e.g., using the problem-solution approach to evaluate the "inventive step" requirement), though ARIPO also employs some American concepts, such as the "best mode" requirement and the use of a "grace period" for filing after some disclosures (though ARIPO offers only a six-month grace period, rather than the one-year grace period foundin the US, and only for disclosures at officially recognized exhibitions).

The Zimbabwean economy has stabilized--petrol stations have reopened, putting cars back on the road (not necessarily a good thing in my view); and supermarket shelves are once again stocked. Introduction of the US dollar as the official currency earlier this year, after Zim $100,000,000,000,000 (hundred trillion) notes were retired, appears to be the best thing to happen to the Zimbabwean economy in years.

Nevertheless, Morgan Tsvangarai and the MDC announced a boycott of the Zimbabwean "unity government" in combination with Robert Mugabe's Zanu PF party (Zanu PF headquarters shown at center in view of city from our hotel, above) due to the criminal prosecution of their appointed cabinet minister of agriculture over the weekend that we were there, which raised questions as to how long the unity government will hold, though there was no immediate apparent impact on safety or city functions.

 

Video of Bob introducing claim-drafting exercise:

Slideshow:

 

Changes coming to USPTO--Part V: new examiner count system

Earlier this week, USPTO Director David Kappos unveiled a proposed new count system for measuring examiner production. This news may sound like esoteric trivia if you are not a patent practitioner; though, in fact, it represents a very important development for the improvement and healthy functioning of the US patent system.

Allow me to first step back and provide some context. First-time patent applicants are often surprised to when I tell them that we can expect a likely rejection of their patent application when the examiner issues a first Office Action. The reasons for this phenomenon are addressed below.

First, examiners at the United States Patent and Trademark Office are given very little time to issue Actions on what are often very complex and detailed patent applications. As technology grows more complex, so do many patent applications; and, therefore, more time should be allotted for examination.

Additionally, Examiner production at the USPTO is measured in "counts." Examiners have historically received one count for a first Action on the merits and one count for an allowance or abandonment. Accordingly, if the examiner issues a first-Action allowance, the examiner receives one count. If, however, the examiner issues a first-Action rejection, allows the applicant to respond, and then allows the application, the examiner receives two counts.

Please do not misinterpret me, however. I am not suggesting that examiners are by-and-large unscrupulous or lack integrity--not at all.  I do occasionally receive first-Action allowances even where issuing that allowance may run contrary to the examiner's self interest in terms of receiving counts, and I find that most of the examiners at the USPTO with whom I interact take their jobs very seriously and have high integrity. Nevertheless, I think most psychologists/sociologists will tell you that this incentive system is likely to skew results, at least in close cases, no matter how fair-minded the participants may attempt to be.

Director Kappos earlier pledged to dramatically change the count system to provide better, fairer incentives for expeditiously reaching determinations of patentability. Kappos previously referred to "disfunctional behavior" in the examination of US patent applications, and the USPTO presentation introducing this proposed new count system cites as an expected result of these changes a reduction of "examiner reluctance to allow patent applications" (slide 3 of the above-linked presentation). Another expected benefit of these changes is to "increase examiner morale leading to reduced attrition" (slide 5--high examiner turnover is currently one of the biggest problems at the USPTO).

Although this initial proposal may ultimately be subject to revision, I give Kappos and his task force high marks in crafting a proposal that appears likely to noticeably advance the goals of promoting efficiency and fairness in patent examination; and I applaud their transparency and openness in presenting this proposal to the public, which is a marked change from the practices of the previous administration.

Important elements of the proposed new count system include the following (with my comments in parentheses):

• allotting the examiner more time to issue a First Action on the Merits (if you value efficient, cost-effective patent prosecution, moving toward a more in-depth, carefully considered evaluation of patentability issues right from the start is welcome news),

• crediting examiners with time to conduct examiner-initiated interviews (I have already posted my views as to how interviews with patent examiners can dramatically advance the resolution of issues during examination; if examiners are likewise encouraged to reach out to attorneys when they confront an issue that may more readily be resolved via an interview, these advantages and efficiencies can be further increased and expanded beyond situations where the attorney initiates the interview), and

• reducing the credit that examiners receive for later Actions in drawn-out examinations. including reduced credit for the filing of Requests for Continued Examination (again good news for applicants wishing for a more expeditious resolution of patentability issues).

The USPTO presentation (slide 6) also includes a couple of tables (reproduced below) comparing the current count system with the proposed new examiner count system:

Current count system: