| As you probably have heard, the US Trademark and | | | | addition, there is talk that Congress might legislate |
| Patent Office (USPTO) has some problems. For a | | | | over KSR v. Teleflex to make it easier to receive |
| number of years, there has been a battle raging over | | | | patents again. |
| patent reform, with new Patent Acts proposed | | | | So what should inventors do to deal with these |
| about every other year. The biggest problems facing | | | | challenges? We talked with Eric Hanscom, the Patent |
| inventors involve the backlog of patent applications. | | | | Law Associate at the One Stop Invention Shop, |
| Not only can it take years to receive your patent, | | | | about how he is advising inventors dealing with these |
| but also the Patent Office, in an attempt to deal with | | | | challenges and what actions he has taken to deal |
| the backlog, is rejecting applications at record rates. | | | | with these changes. |
| This is certainly bad news for inventors, but if you | | | | "Our strategy in dealing with KSR and Bilski is to |
| read on, you can learn some tips in dealing with these | | | | examine the Office Actions, and in the many cases |
| problems. | | | | where the application would have been likely to be |
| At the end of 2008, there were over 1,200,000 total | | | | allowed before KSR and Bilski, but is not probably not |
| patent applications pending, about 800,000 of which | | | | allowable under the new laws, to file a |
| were still awaiting first action. On average, it took | | | | continuation-in-part (CIP) application and hope that |
| 25.6 months for the Patent Office to take its first | | | | the laws ch ange before the CIP is examined," says |
| action with an application, despite the fact that under | | | | Hanscom. With the long wait times at the USPTO, |
| normal circumstances, it is only supposed to take 18 | | | | the chances are pretty good that something will |
| months for a patent to be issued! This is a serious | | | | change before a CIP is examined. The same goes for |
| and growing problem. | | | | those who are facing final rejection. "We are also |
| At the same time, there has been a lot of pressure | | | | suggesting," says Hanscom, "that clients who are |
| for the quality of patents to increase. The Office of | | | | facing a 'Final Rejection' consider filing for RCE's |
| Patent Quality Assurance randomly pulls newly issued | | | | (Requests for Continued Examination) or even appeal |
| patents and reviews them. If they think the patent | | | | the rejections." This again will buy them time and give |
| should have been rejected, the patent examiner who | | | | them a chance to have changes take place before |
| reviewed the application will get negative marks in his | | | | their application is reexamined. |
| or her performance reviews. Then the performance | | | | To better deal with this situation, Hanscom has hired |
| reviews are used to determine employee bonuses. | | | | a former USPTO examiner to help go over Office |
| The result: examiners err on the side of caution so | | | | Actions and advise on strategy to get around KSR v. |
| they don't lose their bonuses. | | | | Teleflex and In Re Bilski. |
| Furthermore, rejecting applications is the easiest way | | | | Hanscom adds one other piece of advice. The recent |
| to make in-house work quotas and cut down on the | | | | Egyptian Goddess case substantially strengthened |
| backlog. To give you an idea on how much this has | | | | design patents. Previously, he would only advise a |
| affected the way examiners work, consider this: in | | | | client to get a design patent if it wasn't possible to |
| the late 1990s, examiners rejected less than 30% of | | | | get a utility patent, but a fter KSR v. Teleflex , this is |
| all patent applications; in the second quarter of 2009, | | | | no longer the case. "Design patents are much less |
| they rejected 59%! | | | | expensive, have a much higher rate of success |
| To compound these difficulties, two recent cases, | | | | (particularly after KSR and Bilski), and are examined |
| KSR v. Teleflex and In Re Bilski, have also caused | | | | much more quickly than utility patent applications (an |
| more changes and challenges for patents. KSR v. | | | | average of 8 months as opposed to a year or two |
| Teleflex was a case heard by the Supreme Court | | | | for most utility patent applications). Thus, until KSR is |
| that has changed the way "obviousness" is defined | | | | overturned, we are suggesting that clients who |
| for patent allowances, making it much more difficult | | | | previously did not consider design patents to seriously |
| to prove your patent application is "non-obvious." In | | | | consider them." You will need to talk to a patent |
| Re Bilski is a lower court decision that greatly | | | | lawyer to find out if a design patent will work for |
| restricts business method patents. | | | | you, but this will be good news for some inventors |
| Is there hope? Yes. The USPTO is starting to make | | | | how can take advantage this recent development. |
| some changes. First, the former USPTO director, | | | | So there is hope, and some ways you can deal with |
| John Dudas, resigned and soon there should be a | | | | this troublesome situation. Although there are many |
| new director appointed who will hopefully turn the | | | | do-it-yourself patent books, we have always |
| Patent Office around. Also current acting | | | | recommended working with a patent professional to |
| commissioner, Peggy Focarino, is starting some | | | | make sure you get the best protection possible and |
| initiatives to train examiners to work more efficiently | | | | to maximize the chances of getting a patent. Now |
| and allow more patents. Furthermore, In Re Bilski is | | | | more than ever you will want the best advice |
| currently in front of the Supreme Court and many | | | | available to make sure you get a patent. |
| are hoping that the decision will be turned over. In | | | | |