WEB PATENT NEWS - October, 2003

by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.

CONTENTS

I. ACCELERATING EXAMINATION OF YOUR PATENT APPLICATION - Tired of waiting for your patent application to be examined? Here is a technique for speeding up the process.

II. HAWAII SBIR/STTR CONFERENCE - Find out about a rare opportunity to meet Federal program managers face to face and learn how to compete for small business research grant and contract awards, and to do your learning in paradise.

I. ACCELERATING EXAMINATION OF YOUR PATENT APPLICATION

In the world of technology development, "time is money," and usually very expensive money at that. So, while it sometimes makes sense to delay the issuance of a patent, e.g., to keep a particularly embryonic version of your invention a secret for a just a little longer, arranging for your patent to issue sooner than it otherwise would is often the best option. This article explains a very low cost technique for accelerating the examination of your patent application by the U.S. Patent and Trademark Office (USPTO).

New regular U.S. patent applications are ordinarily taken up for examination in the order of their effective U.S. filing dates. So, the earlier your effective filing date, the earlier your application is examined (MPEP 708). An effective filing date of a later-filed, but related, application can be the actual filing date of an earlier-filed, provisional or non-provisional, copending U.S. application. Curiously, if the earlier-filed application is an international (PCT) application that designated the U.S. (35 U.S.C. 363), then the later-filed U.S. application is ordinarily taken up for action based on the date that application entered the national stage, in apparently contravention of the Patent Cooperation Treaty [MPEP 1893.03(b)]. Also, just to add to the confusion, Examiners are allowed to discriminate against continuation-in-part (but not continuing or divisional) applications by taking them up for action based on their actual filing dates "if desired," creating an opportunity for the USPTO to state in MPEP 1893.03(b) that "applicants are quite often confused as to the true filing date. . . ."

While unpublished patent applications are maintained in confidence by the USPTO, your patent practitioner (or you) can view the status of your patent application online by means of a USPTO system called Patent Application Information Retrieval (PAIR). If your patent application has an actual filing date on or after May 29, 2000, has been pending for 14 months or more, and you have not received a first Office action, you are earning a day-for-day patent term extension. If not, your application is just sitting there.

If lengthening of the term of your issued patent (assuming it will issue) does not compensate you for the delay, consider filing a Petition to Make Special (MPEP 708.02). If your petition is granted (and it will be if you follow the rules), the Examiner assigned to your application must examine it "out of turn," that is, before he or she works on applications that are not "special." There are a variety of categories of inventions or applications that, upon the filing of a petition, can be granted special status by the USPTO. Some petitions require the payment of a nominal fee and some do not. Some consist of only one page of text and some must contain more information. Each of those categories is described below.

One category is inventions that enhance environmental quality. The USPTO will accord special status to any patent application for an invention which materially enhances the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. In such cases, the petition must be accompanied by a statement explaining how the invention contributes to environment quality. No fee is required for such a petition.

Another category is inventions that contribute to discovery, development or conservation of energy. The USPTO will accord special status to patent applications for inventions which materially contribute to (1) the discovery or development of energy resources, or (1) the more efficient utilization and conservation of energy resources. Examples of inventions in the first category include developments in fossil fuels (e.g., natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. The second category includes inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. The petition must be accompanied by a statement explaining how the invention materially contributes to energy discovery, development or conservation. No fee is required for such a petition.

Another category is inventions relating to superconductivity. The USPTO will, on request, accord special status to all patent applications for inventions involving superconductivity materials. Examples of such inventions would include those directed to superconductive materials themselves as well as to their manufacture and application. A petition must be accompanied by a statement that the invention involves superconductive materials. No fee is required.

Another category of special cases is an application filed by applicant in poor health. The petition must be accompanied by evidence showing that the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor's certificate or other medical certificate. No fee is required for such a petition.

Yet another category is inventions involving recombinant DNA safety. The USPTO will accord special status to patent applications relating to safety of research in the field of recombinant DNA. In this case, the petition must be accompanied by a fee (currently $130) and a statement explaining the relationship of the invention to safety of research in the field of recombinant DNA research.

Another category is inventions related to HIV/AIDS and cancer. The petition for special status should be accompanied by the fee noted above and a statement explaining how the invention contributes to the diagnosis, treatment or prevention of HIV/AIDS or cancer.

Yet another category is inventions for countering terrorism. International terrorism includes "activities that - (A) involve violent acts or acts dangerous to human life that are a violation of the criminal laws of the United States or of any State, or that would be a criminal violation if committed within the jurisdiction of the United States or of any State; [and] (B) appear to be intended - (i) to intimidate or coerce a civilian population; (ii) to influence the policy of a government by intimidation or coercion; or (iii) to affect the conduct of a government by assassination or kidnapping. . . ." The types of technology for countering terrorism could include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems. The petition must be accompanied by the fee noted above and a statement explaining how the invention contributes to countering terrorism.

Another category is inventions relating to biotechnology filed by applicants who are small entities (e.g., independent inventors, small businesses and universities). The petition must be accompanied by the fee noted above and a statement (A) that small entity status has been established or include a statement establishing small entity status; (B) that the subject of the patent application is a major asset of the small entity; and (C) that the development of the technology will be significantly impaired if examination of the patent application is delayed, including an explanation of the basis for making the allegation.

Another category of special cases is inventions for which a prospective manufacturer has been identified. In such cases, the petition must be accompanied by the fee noted above and a statement alleging: (A) that a prospective manufacturer currently possesses sufficient capital and facilities to manufacture the invention in quantity or that sufficient capital and facilities will be made available if a patent is granted (If the prospective manufacturer is an individual, there must be a corroborating statement from some responsible party, e.g., an officer of a bank, showing that said individual has the required available capital to manufacture); (B) that the prospective manufacturer will not manufacture, or will not increase present manufacture, unless certain that the patent will be granted; (C) that the prospective manufacturer obligates himself, herself or itself, to manufacture the invention, in the U.S. or its possessions, in quantity immediately upon the allowance of claims or issuance of the patent; and (D) that the applicant has made or caused to be made a careful and thorough search of the prior art, or has a good knowledge of the pertinent prior art. The applicant must provide one copy of each of the references discovered during the search, if the references are not already of record. Court decisions have made it clear that it is much safer for the search to have been carried out by an independent third party (i.e., by a professional searcher who is not the applicant or the applicant's patent practitioner). To do otherwise risks questions about the objectivity of the search arising during future patent infringement/validity litigation, should any such litigation occur.

Another category is inventions for which infringement is occurring. In such cases, the petition must be accompanied by the fee noted above and a statement alleging: (A) that there is an infringing device or product actually on the market or method in use; (B) that a rigid comparison of the alleged infringing device, product, or method with the claims of the application has been made, and that, in his or her opinion, some of the claims are unquestionably infringed; and (C) that he or she has made or caused to be made the type of search noted above to be made.

Yet another category is single-invention applications. In such cases, the petition must be accompanied by the fee noted above and the application must comply with a number of rules. First, all claims present in the application must be directed to a single invention, or if the Office determines that all the claims presented are not obviously directed to a single invention, the applicant must make an election, without arguments to the contrary, of one group of claims to be examined. Second, the applicant must submit a statement that a pre-examination search was made (of the typed described above), listing the field of search by class and subclass, publication, chemical abstracts, foreign patents, etc. and submit a copy each of the references. Finally, the applicant must submit a detailed discussion of each of the references, pointing out, with particularity, how the claimed subject matter is patentable over the reference.

Another category of special cases is one in which the application has been "pending more than five years, including those which, by relation to a prior United States application, have an effective pendency of more than five years" (MPEP 708.01). Thus, if filing date of an original, regular patent application or the filing date of the parent application of a continuing, continuation-in-part or divisional application is over five years ago, the application qualifies. While this category of special cases is supposed to be recognized automatically by the USPTO, it is often necessary to file a petition (whihc is not a Petition to Make Special) to invoke the supervisory authority of the Commission under 37 CFR 1.181 to force recognition of the situation. No fee is required for such a petition (however, not all Examiners know that rule and you may charged a fee erroneously and then may have to file another petition to get the money back, a situation that I would submit comes under the category "Catch 22").

With respect to the "statements" described above, since 1993 USPTO rules have stipulated that the presentation to the Office of any paper, constitutes a certification that the "statements made therein of the party's own knowledge are true [and] all statements make therein on information and belief are believed to be true." The party also certifies that "to the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that . . . factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery." The USPTO has noted "that it is highly advisable for a practitioner to advise a client or third party that any information so provided must be reliable and not misleading. The submission by an applicant of misleading or inaccurate statements of facts during the prosecution of applications for patent has resulted in the patents issuing on such applications being held unenforceable." So, make sure that your statements in a Petition to Make Special are true and take care to preserve evidence that supports them.

A down side to filing a Petition to Make Special is that there is no guarantee that the Examiner assigned to your application will follow the rules and examine in out of turn throughout its pendency. While some outstanding people work for the USPTO, it is a disfunctional organization. This is reflected in the fact that the USPTO 2002 Annual Report reported that overall customer satisfaction has decreased to 63 percent from 64 percent in 2001. The average time to the first Office action increased from 14.4 months to 16.7 months during that same period (times for "special" applications are not reported separately). The only other U.S. organization that I am aware of that can thrive at this low level of customer satisfaction is another monopoly, Microsoft.

With the current resistance by the Bush Administration to hire much-needed Examiners (more Federal employees), even though the USPTO is a major profit center for the Government and even in the light of an adverse report by the Inspector General, inventors can expect pendency periods for U.S. patent applications to increase. The filing of a Petition to Make Special is one technique that can be used to accelerate the examination process. Another technique was described in my April, 2003, newsletter. If current trends hold, in certain high-technology arts, inventors can expect that, eventually, essentially all of the applications being examined will have been granted special status. Those applications that have not been granted special status will gather dust for years in some USPTO storage facility until those applicants, too, use one of these techniques to accelerate examination.

II. HAWAII SBIR/STTR CONFERENCE

Take a tax-deductible trip to Honolulu and learn the rules of a national small business competition where you have a one in eight chance of winning $100,000 and, if that works out, you have a one in three chance of winning $750,000. Try to find those odds in Las Vegas!

The 8th Biennial Hawaii SBIR/STTR Conference will be held on November 18-19, 2003 at the Hilton Hawaiian Village in Honolulu. This is a rare opportunity to meet Federal program managers face to face and learn how to compete for $1.5 billion annually in grant and contract awards. If you want to be competitive, attendance at a national conference like this is a must. I will give a presentation on intellectual property options and will also be available for free one-on-one meetings.

Federal agencies and departments that spend $100 million or more on research and development (R&D) annually are required by law to set aside 2.5% of the money they spend on extramural (contracted out) R&D for Small Business Innovation Research (SBIR) programs. Technology-based small businesses in the U.S. compete with one another to conduct this Government-funded R&D of new technologies.

At present, the SBIR programs of ten agencies and departments award about $1.4 billion annually to U.S. small businesses. While the programs are similar, the program of each agency and department is set up and administered differently. Phase I SBIR awards (typically up to $100,000) are used to assess the technical and economic feasibility of a technological concept. If Phase I is successful, Phase II SBIR awards (up to $750,000 or more, sometimes millions of dollars) are used to build and test a laboratory prototype of the concept.

These programs are very competitive. Average odds of winning are about one in eight for winning a Phase I award and about one-in-three for a Phase II award, but participation in the free counseling/proposal-review program administered by Hawaii's High Technology Development Corporation (HTDC) can improve those odds by a factor of two for Hawaii-based small businesses. To remain competitive, small businesses must successfully commercialize the results of the funded research. (Many other states have similar counseling programs.)

Small Business Technology Transfer (STTR) programs are similar to SBIR programs, but fewer departments and agencies (and less total money - about $100 million) are involved. The win ratios of STTR programs are usually higher than those of SBIR programs because STTR programs receive fewer proposals. STTR program rules require that a small business team with a research institution, like a U.S. university or federal laboratory, and allow the Principal Investigator (the person responsible for conducting the research) to be employed by an entity other than the small business.

The cost of the two-day conference is $75 but a neighbor island discount is available. A brochure describing the conference is available online. With counseled businesses achieving odds like 1 in 4 for a Phase I award and 1 in 2 for a Phase II award, how can you lose?

Aloha,

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
contact us
http://www.webpatent.com