David Kappos is Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office.  He assumed that role within the Obama Administration when he took over the USPTO in August of 2009, nearly 32 months ago.  Upon arrival Director Kappos found a largely dysfunctional Patent Office, which had really become the “No Patent For You” Office owing to the philosophical and ideological beliefs of the prior Administration.  This lead to the development of a massive backlog of un-examined patent applications and played no small part in the severity of the economic collapse and the sluggish rebound.  We have a technology based economy and start-up companies that are the backbone of our economy struggled without patents to attract capital investment, expand and hire.

There is still a massive backlog of patent applications, but things are undeniably turning around.  There are certainly some pockets of resistance within the USPTO, See Business Methods by the Numbers, but the Patent Office is by-and-large open for business.  The USPTO has returned to the historical philosophy that patent examiners should work cooperatively with patent applicants to identify allowable subject matter and issue patents on what is allowable, not just focusing on rejection after rejection after rejection.

While there are quite a few positive changes, with more in the works, Track One is by far the most successful policy initiative that has come to bear during the Kappos Administration.  The only problem with Track One is that more applicants are not using it!  What are you waiting for? A look at the numbers shows that Track One is a huge success and ought to be employed far more than it has been.

In the annual State of the Union Address President Obama explained: “Innovation is what America has always been about.”  Today the Obama Administration took major steps forward to collaboratively work with private industry to tap American ingenuity to assist in a world-wide humanitarian effort.  The United States government will work with the private sector, universities, and non-profits to foster game-changing innovations with the potential to solve long-standing development challenges in health, food security and environmental sustainability.

I had the honor of being invited to the White House today for the Innovation for Global Development Event, which was held in support of the President’s commitment to using harness the power of innovation to solve long-standing global development challenges.  As a part of this event, David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, launched a pilot program dubbed Patents for Humanity, which is a voluntary prize competition for patent owners and licensees.  The pilot program seeks to encourage businesses of all kinds to apply their patented technology to addressing the world’s humanitarian challenges.

The USPTO’s 12 month accelerated examination program produces higher quality patents in less time and potentially less overall cost than conventional patent examination, or even the new “Track 1″ or other accelerated examination processes.  It’s also a high risk process with a large upfront cost due to the need to prepare an “examination support document.”  Anyone considering it for their own inventions should have a thorough discussion with their patent attorney/agent before embarking on it.

I spoke to five patent practitioners (attorneys and agents) who filed successful 12 month accelerated examination cases in 2011 to get their input on how the process went for them and what subjects should be considered by applicants and their patent counsel before embarking on it.  This will give you, our readers, a consensus view on the subject.  Each of these practitioners got their clients’ patents issued in less than six months.  That seemed like an excellent group to get solid guidance from.

The patent backlog has been well documented over the years. We don’t need to rehash the reasons for the backlog, but everyone in the industry knows that it takes far too long for the overwhelming majority of patents applications to mature into issued patents.  Sure, pharmaceutical companies, biotech start-ups and Universities may want to delay issuance of a patent, or even delay USPTO consideration of an application, but how many clients of yours really want and even need a patent as quickly as possible?  If you represent independent inventors, small businesses, entrepreneurs and start-ups the answer is almost universally that patents are needed with all due speed.

Over the past several years the Patent Office has attempted to offer a variety of procedures to speed up patent applications, such as project exchange where you drop one application to advance another out of turn and the Green Technology Pilot where certain green technologies are advanced out of turn.  Most famously, perhaps because it was a part of the America Invents Act, is Track 1, where you pay an additional $4,800 fee to obtain a patent decision within 12 months.  With all of these efforts some wonder why more haven’t taken advantage of the various acceleration options.  There are two reasons: (1) patent attorneys are very conservative and don’t like change (with good reason); and (2) $4,800 is no small amount of money.

Washington– The United States Patent and Trademark Office (USPTO) announced today plans for the agency to begin accepting requests for prioritized examination of patent applications – allowing inventors and businesses to have their patents processed within 12 months. It currently takes nearly three years to process the average patent. The program, called Track One, launches May 4, 2011, and is part of a new Three-Track system, which will provide applicants with greater control over when their applications are examined and promote greater efficiency in the patent examination process.

The United States Patent and Trademark Office today announced the deadline extension of its Project Exchange through December 31, 2011.  The Federal Register Notice announcing the extension refers to Project Exchange as the “Patent Application Backlog Reduction Stimulus Plan,” which I find rather amusing.  I guess the official name for Project Exchange came into being before we were all so Stimulus Plan weary.

OK, enough. Project Exchange is far too important to applicants who qualify to make fun about it given the unfortunate official name. Under Project Exchange, any applicant with more than one application filed prior to October 1, 2009, that is currently pending at the USPTO, can receive expedited review of one application in exchange for the withdrawal of an unexamined application, thereby speeding up consideration and the time it takes to get a patent issued.

Yesterday the United States Patent and Trademark Office held a public meeting on the so-called Three Track examination proposal, with everyone in agreement that the proposal is quite welcome, at least in principle.  On June 4, 2010, the USPTO published a Notice in the Federal Register setting out the preliminary Three Track proposal and setting Tuesday, July 20, 2010 as a date for the public to come to the Alexandria, Virginia campus to let PTO Officials hear their thoughts.  This public meeting proceeds the due date of written comments by a full month, and many of those who spoke explained they would continue to review the proposal and follow up with additional written comments.  For more information on the specifics of the proposal please see USPTO Announces New Examination Rules.

One thing can be said definitively: everyone thinks it is a good idea, no one has issues with accelerating applications (Track 1) or allowing them to remain on course as today (Track 2), but there were numerous concerns raised about applicants slowing applications down (Track 3).  The good news for the PTO, however, is that speaker after speaker highlighted the same or similar concerns, so it does appear as if there are a finite set of manageable considerations for the PTO to address.  In fact, the senior PTO Officials that I spoke with after the public meeting were extremely pleased and quite grateful.  I was told by one senior PTO Official that the points raised were all good and that the PTO intends to take them into consideration and address the concerns, along with whatever written feedback they receive.  What a refreshing change that will be!

UPDATE: For discussion of the Federal Register Notice see USPTO Announces New Examination Rules, Seeks Comment on 33 Questions.

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The United States Patent and Trademark Office is seeking public comment on a major new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process.  This newly proposed Three-Track program aims to provide applicants with the ability to go faster or slower through the patent process, which will in turn hopefully reduce the pendency of those patent applications that are the most time sensitive.

There will likely be those who oppose this Three-Track proposal, but as far as I can tell what is being proposed is a mechanism to speed your application up or slow your application down. Up until I attended the BIO International Conference in early May 2010 I couldn’t imagine why anyone would want to slow the process down, but there are indeed many who would prefer a slower patent process. I most often work in the software, computer and Internet technology areas where the patent process is extremely slow and getting fast patents is extremely important to attract investors and gain traction. In the biotech, pharma and University sectors, however, there is a great preference for a slower process because basic research is being undertaken and that might not ultimately prove fruitful.