U.S. Patent Office Proposes New Express Lane
~But who will protect the public from bad patents?~
In a move that has been discussed extensively
but not really expected any time soon, the U.S. Patent &
Trademark Office (USPTO) has just proposed a new set of "accelerated examination" procedures
enabling applicants to have either (a) their patent grant or (b) a final rejection
in just one short year. The proposal is described in the Federal Register of
June 26, 2006 (Volume 71, Number 122). This procedure's duration is significantly
shorter than the duration for the present patent examination process, which
can often take more than the three years described in the USPTO's aspirational
Paraphrasing from the USPTO's announcement: "The
[USPTO] procedures will set forth requirements for patent applicants who
want, within 12 months, a final decision by the examiner on whether their
application for a patent will be granted or denied. To be eligible for ‘accelerated
examination,' applicants who file under this procedure will be required to
provide specific information about the prior art so that review of the application
can be completed rapidly and accurately."
Jon Dudas, Undersecretary of Commerce for Intellectual
Property, explained the proposal by noting that "accelerated examination
can provide innovators with the early certainty they may need to attract
investors or protect their inventions against infringers."
Of course, there's a rub, since they want to
shift some of the burden onto the applicant (but you knew that would be true,
Applicants have always had a duty to disclose
to the USPTO relevant prior art of which they were
"actually" aware, but applicants were not required to search for prior art.
Under the USPTO's proposed accelerated examination
procedure, applicants will be required to conduct a search of the prior art,
to submit all prior art that is closest to their invention, and explain what
the prior art teaches and how their invention is different.
In addition to providing and explaining any prior
art references, applicants must explicitly state how their invention is useful
and must show how the written description supports the claimed invention.
The proposal also limits the number of claims allowed in each application
and shortens the time periods for responding to most USPTO communications.
A number of questions remain unresolved, since
a patent search can be performed either competently or haphazardly, and there
is, at present, no mechanism for qualifying or licensing competent patent
Those in the patent prosecution practice area
have always been careful in choosing who performs patent search work, since
the costs associated with incomplete search work can far outweigh the costs
of a good search performed by an experienced searcher, and there are really
not very many good, experienced patent searchers.
Quoting from the USPTO's statement on the proposal: "The
accelerated examination procedure is designed to give applicants quality
patents in less time. In exchange for quick examination, patent examiners
will receive more focused and detailed information about the invention and
the closest prior art from the applicants. This increased disclosure upfront
by applicants will help examiners more quickly make the correct decision
about whether a claimed invention deserves a patent."
While we can see that shifting the burden of
searching (from the USPTO's examining corps to the applicants) will shorten
pendancy time and speed up patent issuance, who will protect the public?
The constitutional bargain underlying patent
law is essentially that if an inventor teaches America a new and useful idea
or invention, then that inventor will be granted a limited time of exclusive
rights in their invention (as defined in their patent application's claims).
At present, the patent application filing fees are used, in part, to pay
for thousands of talented engineers and scientists (i.e., patent examiners)
who are charged with the responsibility of protecting the public from patent
applicants seeking to obtain exclusive rights in something that may already
be known and so be part of the public trust. Each patent application is presently
subjected to a prior art search conducted by a patent examiner who can reject
one or more claims as being anticipated by or obvious in view of prior art
found during that search. The examiner can also go back and search again
and again, under present practice. That patent examiner is a civil servant
who does not have an ownership interest in the outcome of the search.
So here's the other rub: what if an applicant
using the "accelerated examination" procedure has a search performed, but
that search is incomplete? What if the patent examiner, relying on that incomplete
search, issues a bad patent which is actually anticipated by prior art, but
the public is not informed? And what if the newly granted bad patent is used
to sue you or your client? Are you willing to pay $20,000, $100,000 or more
to litigate that patent to a holding of invalidity in federal district court?
What will that risk do to business decision making when considering new products?
These are the larger questions underlying this
policy argument. All that can be said for now is that, if the proposed "accelerated
examination" procedure comes to pass, patent searchers and patent litigators
may become much busier.
J. Andrew McKinney,
Jr., is a partner in Jones, Tullar & Cooper, PC, a law firm specializing
solely in Intellectual Property matters. He counsels clients in patent,
trademark and copyright matters and has served as an advisor on IP law
and IP litigation strategy to general attorneys.