Getting a patent in the U.S. isn’t supposed to be this tough. Once you file an application, you’re supposed to receive your patent–or get a rejection–within 18 months.
Unfortunately, the average wait is almost twice as long: 31.3 months. That means patent applicants are left in legal limbo for, on average, more than two and a half years before they discover what legal rights they will receive for their inventions.
And the wait is increasing. A deluge of patent applications is overwhelming the PTO, despite its best efforts to move the examination process along. “We hired 1,219 new patent examiners last year and another 1,200 new examiners this year, but we are still falling behind,” says John Doll, the PTO’s commissioner for patents. “The backlog of patent applications is growing.”
However, the PTO says it may have a remedy. In its draft Strategic Plan for 2007?? 1/2 2012, the agency is proposing a new “suite of patent products.” In addition to the current type of patent–which issues only after the PTO has fully examined the application–the agency wants to offer three new types of patents: petty patents, deferred examination patents and collaborative examination patents (also known as platinum-plated patents).
The PTO believes this suite of products will save money for applicants, cut the agency’s workload and shorten the time in which it grants patents. Many patent experts disagree, claiming the proposal would be a disaster.
“It would add such a degree of confusion and complexity to an already complex system; it would produce total confusion in [patent] prosecution and enforcement,” says Samson Helfgott, a patent attorney with Katten Muchin Rosenman. “And I don’t think it would help the Patent Office [reduce its backlog].”
So far, the PTO has offered few specifics about its proposals, perhaps because the agency hasn’t quite figured out what it wants. “We want to hear from stakeholders about what kind of patents would suit them,” Doll says.
Thus, to flesh out what the PTO means by, for example, a “petty patent,” it helps to look abroad. A small group of countries grants petty patents, which cover the utilitarian aspects of an object’s shape. Because these patents require little examination, applicants can get them approved quickly and at a low cost.
However, these patent owners get what they pay for. Petty patents offer less legal protection than full-examination patents, so it’s easier to design around them. “The scope of protection is very narrow,” says Herbert Wamsley, executive director of the Intellectual Property Owners Association.
Despite this limitation, the PTO believes that independent inventors and smaller companies would be interested in petty patents. These inventors could save time and money by opting for petty patents instead of the current full-examination patents, and the PTO would reduce its backlog of applications.
However, critics fear that petty patents will backfire on unsuspecting inventors. The inventors will think they are getting robust legal rights, but will learn otherwise when they try to enforce those rights in court.
“Most of these petty patents are struck down when contested,” says Stephen Kunin, a patent attorney with Oblon, Spivak, McClelland, Maier & Neustadt. “Because these patents don’t get a full examination at the patent office, they don’t have full vitality.”
Another product the PTO might offer is a deferred examination. This process is supposed to resolve a common problem facing innovative companies: They wind up with patents they can’t use. After spending significant time and money to prosecute their patent applications, their business plans have changed or the technology has evolved.
“Between 10 percent and 30 percent of patent applications in any area of technology will not be pursued by companies,” says Jeffrey Kusham, a patent attorney at Sidley Austin.
Using a deferred examination, an applicant could apply for a patent–staking out legal rights in the invention–while postponing for years the PTO’s substantive examination of the application. Thus, the applicant could wait until it is sure it wants to make commercial use of an invention to pay the significant legal and PTO fees associated with a substantive examination.
This type of patent also would benefit the PTO, which would need to conduct fewer time-consuming substantive reviews because some applicants would not request a full examination.
But there’s a downside to deferred examinations. Until the PTO examines a patent application, no one knows how much of the application–if any–it will approve. “During prosecution, claims are often narrowed,” Helfgott says. “By just looking at a patent application, there is little way of knowing what claims will ultimately be granted.”
Because third parties can’t know what rights will come out of patent applications, they will be forced to make unpalatable choices. Companies can either avoid profitable innovations that might infringe a future patent, or risk liability for patent infringement.
“[Deferred examination] inhibits competition and the development of new products because you don’t know what claims the PTO will grant,” Kunin says.
While petty patents and deferred examinations are intended to make the patent system faster and cheaper for applicants, collaborative examinations would do the opposite.
Applicants would pay an extra $30,000 or so to receive longer, more thorough examinations.
“Today, the average time spent on a patent examination is 20.7 hours,” Doll says. “A collaborative patent [application] would be examined by a team of experts that would spend ?? 1/2 100 to 300 hours on the examination. The examination may also be opened to the public, so they could submit prior art that might bear on the application. The result would be a very high level of certainty that the patent would withstand [subsequent] legal examination.”
These patents would appeal to companies contemplating litigation. By making their patents appear bulletproof, it would encourage alleged infringers to settle rather than go to court.
Critics, however, allege that platinum-plated patents would undermine the strength of ordinary examination patents. “The PTO wants to establish a higher-level patent and say this is a really good patent, but what does that say about other patents?” Helfgott notes. “Are they not good patents?”
Moreover, this type of patent would create more work for the PTO at a time when the agency is already swamped. “[I]t diverts the USPTO’s very limited resources into a few extra cases where applicants are willing to pay high costs,” Wamsley says.
The agency has high hopes for its proposals. “I don’t see many stumbling blocks going forward with this,” Doll explains.
Others, however, predict a different outcome. “[The PTO] is facing strong opposition from all sides, and the agency hesitates to put forward things that have strong opposition,” Helfgott says. “I suspect they may back off from these proposals and not put them in the final strategic plan.”