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Change in Law Triggering Race to Patent Office
The Legal Intelligencer
As the final pieces of the America Invents Act are about to go into effect March 16, intellectual property lawyers are scrambling to get thousands of last-minute patent filings in before the old rules expire Friday.
And with firms inundated by clients' interest in updating their patent filings before the country moves from a first-to-invent to a first-to-file patent system Saturday, those lawyers expressed concern that the servers at the U.S. Patent and Trademark Office may not be able to handle the surge in online filings.
Attorney Kenneth N. Nigon of intellectual property boutique RatnerPrestia in Valley Forge, Pa., said his firm has been asking clients to file in advance of March 15. He said a number of clients were looking to file last week and this week. The firm which Nigon pointed out is just one of hundreds of patent firms across the country has more than 120 applications currently waiting to be filed before Saturday.
"Because of that we also are kind of wary and think the patent office electronic filing system may not be able to handle it," Nigon said. "We've also prepared our in-house staff to do paper filings if need be."
Aside from the Saturday date for implementation of the new patent system, Nigon said he would expect another round of increased filings in advance of March 19, when filing fees are set to increase.
Cozen O'Connor intellectual property attorney Kyle Vos Strache said in a typical week he may personally file a handful of applications. This week, Vos Strache said, he anticipates filing dozens.
"I imagine the patent office is going to be incredibly busy come Thursday and Friday," Vos Strache said. "We've really been pushing clients to get us responses to our drafts in the last two or so weeks and not this week. It's hard to say whether the servers at the patent offices will be able to handle it."
Vos Strache said he is trying to be proactive and avoid filing anything Friday. He said there is "truly that potential for something to go wrong" in this situation. To avoid that as best as it can, Cozen O'Connor has approved its attorneys and staff to work late all this week to get everything done, he said.
Buchanan Ingersoll & Rooney's intellectual property group co-chairman, Michael L. Dever, said there will most likely be a "huge spike" in application filings Friday. That is something the USPTO had been preparing for, he said.
The USPTO is not expecting a problem this week. The office said it "has deployed sufficient server capacity to support any potential surge."
The latest available stats don't show any major month-to-month gains in patent filings and actually show a decrease between December 2012 and February 2013. But the weekly totals available through March 2 show filings are on the rise.
According to stats from the USPTO, there were 48,998 filings in December 2012, 44,059 in January and 43,553 in February.
While monthly stats were on the decline in the early part of the year, that could have represented a lull as applicants prepared their filings. In looking at the recent weekly totals, filings rose from 10,080 in the week ending February 23 to 12,670 in the week ending March 2, the latest week for which data was available from the USPTO.
Nigon said the patent office is working as hard as it can and is faced with high expectations from the public and little time to read through claims. Patent officers get about 20 hours from the time they pick up an application to when they must finish reviewing it, he said. Nigon said they would be better off with a little more time.
While the examiners used to search paper files, which meant they reviewed various tables and definitions included in the filing, they are now mainly using keyword searches, Nigon said. Though not often, he said that sometimes results in a reference that is off base or a missed related patent.
Nigon said the office is moving in the right direction by instituting a trial program where a patent applicant can interview an examiner before the first official action, helping to resolve many of those concerns.
The office has also been adding staff and, for the first time, opening up satellite locations around the country.
At the end of fiscal year 2010, the USPTO had 6,225 patent examiners and 378 trademark examining attorneys. By the end of fiscal year 2012, that rose to 7,935 patent examiners and 386 trademark examining attorneys, according to USPTO annual reports.
Dever said the office has done a good job recently of reducing its backlog.
The upcoming implementation of the AIA rules, which are the last of three rounds of measures to give effect to the 2011 act and move the United States more in line with how its international counterparts grant patents, have created a backlog of sorts at law firms, too. Not that they are complaining.
The patent attorneys who spoke to The Legal said the clients looking to take advantage of the old system before Saturday are mainly in the United States because Europe and Asia already operated on a first-to-file system.
Dever said the companies that had historically taken a more iterative approach to their invention developments through incremental changes and filing updates might have looked to speed up that process in advance of the deadline Saturday.
Vos Strache said Cozen O'Connor IP attorneys have been reaching out to clients for months, setting up meetings with each of them to review their patent portfolios and create an action plan for what needs to be filed by Friday. Come Saturday, the landscape will look much different, he said.
"We've been adamant that if you come up with new inventions, it's not something that you can really sit on now and have a signed invention disclosure form and just have it dated and continue to work on it," Vos Strache said. "We really are coming to a point where you're going to have to say, 'Do we want to file this?'"
After the new rules go into effect, attorneys aren't expecting much in the way of an increase in patent litigation. But within a year or two they do expect the new post-grant review proceedings to kick into high gear. The process allows challenges to patent grants within nine months of the issue date, Dever said, noting those challenges will start to creep up later in the year.
Nigon said he thinks there will be more of the post-grant challenges filed than litigation because the advantage in those proceedings goes to the challenger, not the patent holder.
While Dever noted the IP bar and its clients have had more than a year to anticipate and prepare for the new changes to U.S. patent law, the scrambling done in the last few weeks and days shows there's nothing like deadlines to move people into action.
This article originally appeared in The Legal Intelligencer.