Maryland Bar Bulletin
Publications : Bar Bulletin : August 2006

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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 policy statements.

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, didn't you?).

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 searchers.

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.

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Publications : Bar Bulletin: August 2006

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