Comments on: USPTO to Host Roundtable on Three-Track Patent Proposal http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/ Patents, Software Patents, Patent Applications & Patent Law Thu, 09 Feb 2012 00:13:00 +0000 hourly 1 By: IANAE http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14115 IANAE Mon, 19 Jul 2010 13:24:48 +0000 http://www.ipwatchdog.com/?p=11695#comment-14115 <blockquote>As it is now, a potential licensee can just decline to license the invention, and wait for the 18-month publication, which can be readily found since they would then probably know the inventor’s name. They could then *see* the technology, and start trying to design their way around the application in the more than a year before the patent issues to the inventor that tried to license the technology to them.</blockquote> That's not a bug, it's a feature. The patentee's competitors should be encouraged (though not by the patentee himself, obviously) to design around the technology, because (1) it promotes further innovation in the "useful arts", (2) they are avoiding the infringement of someone else's rights, which is always a good thing, and (3) the patentee should be crafting his disclosure and claims to make design-arounds impractical, and on your facts he still has time to do so.

As it is now, a potential licensee can just decline to license the invention, and wait for the 18-month publication, which can be readily found since they would then probably know the inventor’s name. They could then *see* the technology, and start trying to design their way around the application in the more than a year before the patent issues to the inventor that tried to license the technology to them.

That’s not a bug, it’s a feature.

The patentee’s competitors should be encouraged (though not by the patentee himself, obviously) to design around the technology, because (1) it promotes further innovation in the “useful arts”, (2) they are avoiding the infringement of someone else’s rights, which is always a good thing, and (3) the patentee should be crafting his disclosure and claims to make design-arounds impractical, and on your facts he still has time to do so.

]]> By: Paul F. Morgan http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14096 Paul F. Morgan Sun, 18 Jul 2010 19:51:25 +0000 http://www.ipwatchdog.com/?p=11695#comment-14096 There is also now 35 USC 135(b)(2) protection (from others claiming your invention with copied or obviously similar claims) triggered from your 18 month application publication. There is also now 35 USC 135(b)(2) protection (from others claiming your invention with copied or obviously similar claims) triggered from your 18 month application publication.

]]> By: Stan E. Delo http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14095 Stan E. Delo Sun, 18 Jul 2010 18:05:48 +0000 http://www.ipwatchdog.com/?p=11695#comment-14095 Roger that Paul, and I was unaware of the 102(e) advantage. Roger that Paul, and I was unaware of the 102(e) advantage.

]]> By: Stan E. Delo http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14094 Stan E. Delo Sun, 18 Jul 2010 17:54:30 +0000 http://www.ipwatchdog.com/?p=11695#comment-14094 First of all, sorry about accidentally including the virus check message at the end, as I copied my message from a letter I sent to a group that will be attending the roundtable, that were seeking input from their membership. Paul F. Morgan... If independents like myself are reasonably certain through the expedient of doing very thorough market research, the increased fees for the fast track would be gladly paid by me at least. Often being able get the best licensing deal possible or even possible at all at any royalty rate hinges upon having a granted Patent in hand, as opposed to just having a "Patent Pending" As it is now, a potential licensee can just decline to license the invention, and wait for the 18-month publication, which can be readily found since they would then probably know the inventor's name. They could then *see* the technology, and start trying to design their way around the application in the more than a year before the patent issues to the inventor that tried to license the technology to them. Probably more the exception than the rule, but if the invention seems to be a cutting edge type of invention, they will be sorely tempted. Indeed, most times potential licensees don't even want to look at it, because they are probably in the same field, and they might be on nearly the same track in their internal R&D efforts, and want to avoid any conflicts of interest when they finally file an application themselves. BTW Gene... I Really like the e-mail notice feature, which should really help to stimulate some interesting discussions in the future. Stan E. Delo First of all, sorry about accidentally including the virus check message at the end, as I copied my message from a letter I sent to a group that will be attending the roundtable, that were seeking input from their membership.

Paul F. Morgan…

If independents like myself are reasonably certain through the expedient of doing very thorough market research, the increased fees for the fast track would be gladly paid by me at least. Often being able get the best licensing deal possible or even possible at all at any royalty rate hinges upon having a granted Patent in hand, as opposed to just having a “Patent Pending”

As it is now, a potential licensee can just decline to license the invention, and wait for the 18-month publication, which can be readily found since they would then probably know the inventor’s name. They could then *see* the technology, and start trying to design their way around the application in the more than a year before the patent issues to the inventor that tried to license the technology to them. Probably more the exception than the rule, but if the invention seems to be a cutting edge type of invention, they will be sorely tempted. Indeed, most times potential licensees don’t even want to look at it, because they are probably in the same field, and they might be on nearly the same track in their internal R&D efforts, and want to avoid any conflicts of interest when they finally file an application themselves.

BTW Gene… I Really like the e-mail notice feature, which should really help to stimulate some interesting discussions in the future.

Stan E. Delo

]]> By: Paul F. Morgan http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14093 Paul F. Morgan Sun, 18 Jul 2010 17:29:21 +0000 http://www.ipwatchdog.com/?p=11695#comment-14093 Re: above comment that: "the current practice of requiring [18 month U.S. ] publication if the applicant wants to file abroad to be woefully damaging to the applicants’ ability to profit from their inventions.." ? If one is filing abroad, that application is going to be published in 18 months by either WIPO/PCT and/or the designated foreign country anyway, and in most cases available for on-line searching by anyone. Furthermore, the U.S. publication gives the U.S. inventor an additional [102(e) date] advantage against others. Re: above comment that: “the current practice of requiring [18 month U.S. ]
publication if the applicant wants to file abroad to be woefully damaging to
the applicants’ ability to profit from their inventions..” ?

If one is filing abroad, that application is going to be published in 18 months by either WIPO/PCT and/or the designated foreign country anyway, and in most cases available for on-line searching by anyone. Furthermore, the U.S. publication gives the U.S. inventor an additional [102(e) date] advantage against others.

]]> By: Paul F. Morgan http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14092 Paul F. Morgan Sun, 18 Jul 2010 17:17:41 +0000 http://www.ipwatchdog.com/?p=11695#comment-14092 I think that this 3-tier examination system is a good idea, whether or not it significantly reduces the backlog by increasing abandonments. To my mind that is not nearly as publicly important as the ability this system would provide to chose a faster track tier 1 examination [with a fee [and possibly a prior art search] but without the dangerous and costly currently required petition allegations] for those needing faster patenting for small entity licensing and obtaining venture capital funding to commercialize inventions now stuck in years of backlog delays. The latter has been considered the most important direct economic value of patents. Plus, the ability to alternatively chose regular tier 2 or slower tier 3 examinations to provide more time to polish claims to cover one’s final commercial products, especially for pharmaceutical and other technologies often needing post-initial-filing testing, product optimization, research for other effective related species to provide 112 generic claim support, etc. All without having to file and pay for numerous continuations or RCE’s. These client-tailored advantages are all independent of overall backlog reduction questions. This system may not significantly reduce the overall PTO backlog unless a significant percentage of tier 3 applications are abandoned before their deferred examinations. However, it could also provide that if tier 3 applications would have a sufficiently high examination fee for large entities to make decision-avoidance-prone corporate foreign and U.S. managers (and universities) to make genuine "pay or abandon" decisions before the end of their examination deferment period. Meanwhile, all, especially small, inventors would optionally have more time to seek licensees before having to pay any examination fees. Furthermore, the proposed tier 3 deferment period is not much of any longer than current examination deferments from using provisionals, and, especially, PCT, in many key technologies. It seems quite hypocritical that so much of the opposition to any kind of U.S. deferred examination comes from those extensively using deferred examinations in Japan and elsewhere and/or extensively delaying their U.S. examinations via maximum PCT delay opportunities, provisional filings, serial continuations, and greatly delayed filing of divisional applications for claims restricted out years before. Furthermore, as to those alleging that any deferred examination will make product right to use or infringement studies more difficult without seeing final claims sooner, most new products are now launched without such studies, as evidenced by the very few patent suits these days that are on patents the defendants even knew about before they were sued, other than in the pharmaceutical industry and a few others. The patents companies should be most concerned about will logically be the ones that will be fully issued faster by request under tier 1, and thus have final claims to review much sooner than under the current backlogs. Last but not least, the USPTO does not enforce examinations of applications in proper original (true) filing date order now anyway, as can be seen from their continued inexcusably delayed issuances of “submarine” patents, etc. I think that this 3-tier examination system is a good idea, whether or not it significantly reduces the backlog by increasing abandonments. To my mind that is not nearly as publicly important as the ability this system would provide to chose a faster track tier 1 examination [with a fee [and possibly a prior art search] but without the dangerous and costly currently required petition allegations] for those needing faster patenting for small entity licensing and obtaining venture capital funding to commercialize inventions now stuck in years of backlog delays. The latter has been considered the most important direct economic value of patents. Plus, the ability to alternatively chose regular tier 2 or slower tier 3 examinations to provide more time to polish claims to cover one’s final commercial products, especially for pharmaceutical and other technologies often needing post-initial-filing testing, product optimization, research for other effective related species to provide 112 generic claim support, etc. All without having to file and pay for numerous continuations or RCE’s. These client-tailored advantages are all independent of overall backlog reduction questions.
This system may not significantly reduce the overall PTO backlog unless a significant percentage of tier 3 applications are abandoned before their deferred examinations. However, it could also provide that if tier 3 applications would have a sufficiently high examination fee for large entities to make decision-avoidance-prone corporate foreign and U.S. managers (and universities) to make genuine “pay or abandon” decisions before the end of their examination deferment period. Meanwhile, all, especially small, inventors would optionally have more time to seek licensees before having to pay any examination fees. Furthermore, the proposed tier 3 deferment period is not much of any longer than current examination deferments from using provisionals, and, especially, PCT, in many key technologies.
It seems quite hypocritical that so much of the opposition to any kind of U.S. deferred examination comes from those extensively using deferred examinations in Japan and elsewhere and/or extensively delaying their U.S. examinations via maximum PCT delay opportunities, provisional filings, serial continuations, and greatly delayed filing of divisional applications for claims restricted out years before. Furthermore, as to those alleging that any deferred examination will make product right to use or infringement studies more difficult without seeing final claims sooner, most new products are now launched without such studies, as evidenced by the very few patent suits these days that are on patents the defendants even knew about before they were sued, other than in the pharmaceutical industry and a few others. The patents companies should be most concerned about will logically be the ones that will be fully issued faster by request under tier 1, and thus have final claims to review much sooner than under the current backlogs.
Last but not least, the USPTO does not enforce examinations of applications in proper original (true) filing date order now anyway, as can be seen from their continued inexcusably delayed issuances of “submarine” patents, etc.

]]> By: Stan E. Delo http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14091 Stan E. Delo Sun, 18 Jul 2010 17:16:13 +0000 http://www.ipwatchdog.com/?p=11695#comment-14091 Hello Gene, Generally I tend to like the Three-Track approach, as it would allow applicants to delay things if needed by using the 3rd track. The 30 month time line would tie in nicely if the applicant were approaching the USPTO filing after starting with a PCT application primarily. However, I don't like the requirement to have the applications published at 18 months. It Might be Sorta OK if it is not required to give up the right to request non-publication up front and irrevocably. That way the applicant could opt out of publication before 18 months if things seemed to be indicating it was prudent to put the application on a faster track. Personally I have always thought that the current practice of requiring publication if the applicant wants to file abroad to be woefully damaging to the applicants' ability to profit from their inventions, as the rest of the world will be able to knock off the invention nearly a year and a half before the applicant is even awarded a patent by the USPTO. It seems to me as if the USPTO should be required to keep applications confidential until they are awarded a Patent, so that in the event of an eventual rejection, the applicant can go back and try again, without having all of their previous work being given away for free to the rest of the world. Instant prior art at 18 months, which might cause the inventors themselves to create Their Own prior art which could ironically be used to disallow a newer improved application based upon their own past R&D efforts in some cases. I recently heard from a patent agent that the reason my PTO searching was going so slowly was probably because some Asian countries were bulk-downloading applications to use in their own R&D efforts, as the PTO currently allows it happen. What ever happened to fairness for American citizens and inventors and allowing them to access what they have mostly paid for with their filing and maintenance fees? I would like to see 18-month publication go away entirely here in the US, but it will literally require an act of Congress to make that happen. On the other end of the spectrum in the Track One approach, the Publication issue becomes somewhat moot, IF, and this is a big if to way of thinking, they can actually issue patents in less than 18 months. As Mr. Kappos points out, he will need Congressional action to be able to reduce fees for small and micro entities, which in my opinion would be a Huge boost for said entities. Perhaps some at higher levels forget at times that many times inventors are developing things out of their own pockets and on a shoestring, which makes it very difficult for them to be able afford to even file an application at all. I can't help but wonder how many future new breakthroughs like Penicillin, Sonar, or MRI's will never see the light of day because the risk/reward barrier is too high to take a chance on investing in them. I very much look forward to viewing the hearing, and wish I could be there. Stan E. Delo -------------------------------------------------------------------------------- No virus found in this incoming message. Checked by AVG - www.avg.com Version: 9.0.830 / Virus Database: 271.1.1/3004 - Release Date Hello Gene,
Generally I tend to like the Three-Track approach, as it would allow
applicants to delay things if needed by using the 3rd track. The 30 month
time line would tie in nicely if the applicant were approaching the USPTO
filing after starting with a PCT application primarily. However, I don’t
like the requirement to have the applications published at 18 months. It
Might be Sorta OK if it is not required to give up the right to request
non-publication up front and irrevocably. That way the applicant could opt
out of publication before 18 months if things seemed to be indicating it
was prudent to put the application on a faster track.

Personally I have always thought that the current practice of requiring
publication if the applicant wants to file abroad to be woefully damaging to
the applicants’ ability to profit from their inventions, as the rest of the
world will be able to knock off the invention nearly a year and a half
before the applicant is even awarded a patent by the USPTO. It seems to me
as if the USPTO should be required to keep applications confidential until
they are awarded a Patent, so that in the event of an eventual rejection,
the applicant can go back and try again, without having all of their
previous work being given away for free to the rest of the world. Instant
prior art at 18 months, which might cause the inventors themselves to create
Their Own prior art which could ironically be used to disallow a newer
improved application based upon their own past R&D efforts in some cases. I
recently heard from a patent agent that the reason my PTO searching was
going so slowly was probably because some Asian countries were
bulk-downloading applications to use in their own R&D efforts, as the PTO
currently allows it happen. What ever happened to fairness for American
citizens and inventors and allowing them to access what they have mostly
paid for with their filing and maintenance fees? I would like to see
18-month publication go away entirely here in the US, but it will literally
require an act of Congress to make that happen.

On the other end of the spectrum in the Track One approach, the Publication
issue becomes somewhat moot, IF, and this is a big if to way of thinking,
they can actually issue patents in less than 18 months. As Mr. Kappos points
out, he will need Congressional action to be able to reduce fees for small
and micro entities, which in my opinion would be a Huge boost for said
entities. Perhaps some at higher levels forget at times that many times
inventors are developing things out of their own pockets and on a
shoestring, which makes it very difficult for them to be able afford to even
file an application at all. I can’t help but wonder how many future new
breakthroughs like Penicillin, Sonar, or MRI’s will never see the light of
day because the risk/reward barrier is too high to take a chance on
investing in them.

I very much look forward to viewing the hearing, and wish I could be there.

Stan E. Delo

——————————————————————————–

No virus found in this incoming message.
Checked by AVG – http://www.avg.com
Version: 9.0.830 / Virus Database: 271.1.1/3004 – Release Date

]]> By: inventor0875 http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/#comment-14081 inventor0875 Sat, 17 Jul 2010 19:47:00 +0000 http://www.ipwatchdog.com/?p=11695#comment-14081 Proposal: Enhancing Fast Examination with an Applicant option to Schedule Patent Issue. Scenario: Innovation in need of Funding. The Patent Office would provide a fast “notice of allowance” along with an Applicant option to schedule patent issue (public disclosure/notice) for up to at least 18 months (from filing). For example, an Applicant receives a “notice of allowance” in 3 months on a nice set of broad and backup claims. Applicant could then “sell” investors by having known claims (value & lower risk) along with 15 months of stealth/first-mover advantage (lower risks and greater potential reward). This combination would help start-ups to obtain/increase funding and succeed in bringing the innovation to market as first-mover. Proposal: Enhancing Fast Examination with an Applicant option to Schedule Patent Issue.
Scenario: Innovation in need of Funding.
The Patent Office would provide a fast “notice of allowance” along with an Applicant option to schedule patent issue (public disclosure/notice) for up to at least 18 months (from filing).
For example, an Applicant receives a “notice of allowance” in 3 months on a nice set of broad and backup claims. Applicant could then “sell” investors by having known claims (value & lower risk) along with 15 months of stealth/first-mover advantage (lower risks and greater potential reward). This combination would help start-ups to obtain/increase funding and succeed in bringing the innovation to market as first-mover.

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