WEB PATENT NEWS - October, 2004
by Robert M. Hunter, Registered Patent Agent
News about patents, licensing and seed capital sources for inventors and innovating organizations.
I. THE PATENTING PROCESS - Here is what I tell new inventors about the steps in the patenting process.
II. U.S. PATENT SYSTEM IN CRISIS - The U.S. Patent and Trademark Office 21st Century Strategic Plan is not being implemented and pendency delays are increasing.
III. PROPOSED NEW SMALL BUSINESS SIZE STANDARDS WITHDRAWN - The Small Business Administration has withdrawn its proposal to change small business size standards.
I. THE PATENTING PROCESS
In the U.S., inventorship is earned by the first person(s) to conceive of a complete and operable (useful) invention, who is/are thereafter diligent in either building a testing the invention or filing a patent application. So, the patenting process begins with contemporaneous, witnessed documentation of these activities.
When the invention is complete, evaluation of the invention is warranted. This is the case because patenting an invention can be expensive, so it makes sense to take steps to reduce the risk as you go along. This step is a "do-it-yourself" activity. It involves preparing an invention disclosure and evaluating the commercial potential and novelty of the invention. The inventor can develop a good idea of commercial potential by performing the commercial potential evaluation on my website. Similarly, the inventor can assess the novelty of the invention by conducting a key word search to determine into which class/subclasses the U.S. Patent and Trademark Office (USPTO) has classified inventions of his type, and follow up with a class/subclass search on the USPTO website.
Often, performing the "do-it-yourself" step will reveal that investing in patenting the invention is not warranted. Just because an inventor can convince himself that an invention has commercial potential and is new, however, does not mean that his assessment is correct. The next step involves retaining independent third parties to assess the marketability and novelty of the invention. I am happy to coordinate these efforts. I often refer inventors to marketability consultants who I know are honest, because many are crooks.
In the case of a novelty search, I prepare some example patent claims to focus a searcher I retain in the Washington, D.C. area on what we believe are the patentable aspects of the invention. Having a professional searcher perform the search is important for legal reasons and because someone on the team has to actually want to find prior art. It is too easy for the invention's proponents to ignore reality and maintain a state of denial, and so these efforts should be performed by professionals who can act as a "Devil's Advocate."
Rarely will the results of a novelty search prevent patenting of all aspects of an invention, but it is often the case that the inventor did not invent the general concept of his invention but rather has invented one way to accomplish the objectives of his invention. At this point, however, the inventor (with advice about what is likely to be patentable from me) must decide whether there is enough "left on the table" to warrant further investment.
If the inventor decides to invest in preparation and filing of a patent application, I ask him to update his invention disclosure by pointing out to me how his invention differs in physical structure or process steps from each of the references found in the novelty search. This forces the inventor to understand how others have solved the technical problem his invention addresses and to reflect on why his approach different (and, hopefully, better).
If the invention is a technology, I usually recommend that the inventor retain me to prepare and file a provisional patent application as his first U.S. application. That is the least expensive way to assert priority of invention and to establish a "patent pending" situation. Often, my clients' inventions are evolving over time and this approach is the most accommodating of change. In some cases, the first-filed provisional application is revised one or more times during its 12-month pendency period to assert priority of invention of improved versions of the invention. In other cases, the inventor files the first version of the provisional application himself and I revise that version.
Before the end of the 12-month pendency period, the final version of the provisional application is again revised to add subtle arguments for patentability to the Background section and to add formal claims (link) to the Claims section of the application. Claims are added that are designed to maximize royalties and to link (link) different embodiments of the invention. Care is taken to support in the application and claim all potentially valuable aspects of the invention. Because it is in many ways an "art," the claim writing step is where a professional patent agent or patent attorney adds much value to the process. At least the broadest claims are paraphrased in the Summary section. The regular (nonprovisional) patent application is then filed, along with an Information Disclosure Statement that discloses to the USPTO any related art references (offers for sale, public uses, etc.) of which those involved in the process are aware.
The next step in the patenting process is prosecution of the regular patent application. For straightforward inventions, this activity begins within 14 months of the filing date. For complex biotechnology or software inventions, it can begin 2 to 4+ years after filing. This step is described in my January 2001 newsletter and January 2003 newsletter. This step in the process can be accelerated as explained in my October 2003 newsletter.
If a professional novelty search has been performed, it is very likely that claims will be allowed to important aspects of the invention. The next step is issue (granting of the patent), after which point in time enforcement of the patent is possible.
II. U.S. PATENT SYSTEM IN CRISIS
Last year, the Director of the U.S. Patent and Trademark Office (USPTO) warned: "without fundamental changes to the way the USPTO operates, the quality of the patents and trademarks we issue likely will deteriorate, and the time it takes for an application to be reviewed will skyrocket. Indeed, patent pendency rates in the United States now average over two years, and in some critical technologies pendency averages four years. Without significant changes to our method of processing applications, the pendency time for the average application will soon reach three to four years."
A year later, the USPTO is still operating in a crisis mode. Patent application numbers have once again increased to the point that the Office of Initial Patent Examination is running several months behind in even issuing filing receipts. Congress has not yet approved the significant fee increases that have been proposed by the Administration to address the crisis. And, the USPTO patent e-filing system is failing many practitioners who are trying to use it.
In my July 2004 newsletter, I pointed out that the House had passed H.R. 1560 which authorized the fee increases in a way that protected small entities, but that the Senate had not passed a companion bill. USPTO fee increases are currently contained in a Senate version of an appropriations bill, S.2809, but the Senate version still does not contain the safeguards present in the House version. If you agree with the provisions added to the House version of the bill, I encourage you to contact Congress (Senate and House) and make sure your opinions are heard.
A critical component of the USPTO 21st Century Strategic Plan is e-filing of trademark and patent applications. The USPTO Director noted recently that while e-filing of trademark and patent applications has been available for some years, trademark e-filing is running at about 70 percent of applications filed while patent e-filing is only running at 1-2 percent. Reasons given at a recent e-filing workshop for the failure of adoption of the current version of USPTO e-filing software included: fear of malpractice liability due to risk that USPTO e-filing software will drop application content, concern that an e-filing can take hours longer than a paper filing, leading to costs that cannot be passed on to clients, and frustration with non-standard data ports used by USPTO software, leading to user firewall problems. Obviously, there are a lot of problems to overcome before widespread adoption of this critical component of the plan can occur.
Fortunately, there have been no bills introduced in Congress this year to implement the changes to the U.S. patent system proposed by the Federal Trade Commission and the Department of Justice, which I have argued are bad for small entities. A new USPTO director was recently appointed by President Bush in a recess appointment (when Congress was not in session and without approval by the Senate). Hopefully, he will be able to lead the USPTO out of a crisis that threatens to introduce further pendency delays into our patent system.
III. PROPOSED NEW SMALL BUSINESS SIZE STANDARDS WITHDRAWN
In my April 2004 newsletter, I warned that the Small Business Administration (SBA) was proposing to change the rules that are used to determine which businesses can participate in Federal procurement and lending programs. Under the SBA proposal, the new small business size standards were to range between 50 employees and 1,500 employees, depending on the industry or SBA program.
Because the proposed changes were unacceptable to the U.S. small business community, they have been withdrawn. The SBA Associate Deputy Administrator for Government Contracting has stated that America's small business owners told the SBA "good intention, good idea, but needs a little more work."
Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114