Solving the Patent Crisis and PTO Budget

I am extremely encouraged by the fact that the US Patent Office seems to be increasingly coming under the direction of those who have a sincere desire to see the system succeed and be better.  I think Acting Commissioner Peggy Focarino is making real progress with important initiatives, I think it is a step in the right direction for President Obama to appoint a Patent Attorney to run the Patent Office, which as odd as it sounds is a revolutionary concept.  I think bringing people like Nick Godici back is a great step, and like I have said on numerous times in my writing we need to leverage the collective experience of the many talented folks who have left the USPTO or been forced out for political reasons.  Having said all this, good people who understand the system are only the first step to regaining control of the destiny of the Patent Office.  Given the chaos that has lead to unbelievable and counter-productive delays in getting a patent application examined and issued, there needs to be creative outside-the-box thinking in order to get the PTO back on track and innovation flowing to the point where we can dig ourselves out of this horrible recession.  Toward that end, I submit the follow recommendations.

Deferred examination is an enormously bad idea.  We already have deferred examination as a result of the many failures within the Patent Office.  It is routine to wait 3, 4, 5 or more years for an examiner to act on a case in many technological areas, and in class 705 it is routine to wait 8 years or more for a substantive action.  This my friends is deferred examination on steroids!  How deferred examination could be pitched as a positive seems odd, and a uniquely government view of the world.  We have deferred action on applications for so long the solution is to further defer action.  Who would think that makes sense?  What we need is not deferred examination, but rather a new work-flow process that enable quicker resolution and defers decision making.

Right now if you file a provisional patent application you have 12 months within which to file a nonprovisional patent application.  Done appropriately this makes all the sense in the world and there is nothing but benefit to be had by first filing a provisional patent application.  Nevertheless, we all know what 95% of provisional patent applications are — a waste of time and money.  Provisional patent applications have become synonymous with filing whatever disjointed information you have together with the modest fee and a provisional patent application cover sheet.  We also know that many of the scams and those who are openly engaging in the practice of law without a license use provisional patent applications and let individuals think they have received “a provisional patent.”  This practice is abused, ripe with fraud and only in rare instances used appropriately.

What we need is a revision in the laws and rules relative to provisional patent applications.  A provisional patent application should not be a “file whatever you want and get a patent pending,” but rather it should be a complete patent application minus the claims.  It should be the first US patent application filed (assuming you did not follow the PCT path) and it should be what is what we call a parent application today.  It must be required to be a real patent application minus claims.  This will instantly end the fraud perpetrated on individual inventors and entrepreneurs, and it would deal largely with those engaged in the unauthorized practice of law, which is something the USPTO seems unwilling to do despite specifically changing practice rules for this purpose in September 2008.

A provisional patent application should not become abandoned 12 months after filing, but rather should remain pending until the time the Patent Office is ready to begin substantive examination of the application.  Alternatively, a provisional patent application should remain pending for 24 months.

No claims should be required to be filed until at least 18 months after the priority date of the underlying patent application.  This is due to the fact that prior art that exists for any application cannot be considered a closed universe in any real or logical way until 18 months after the priority filing date.  As those in the industry know, this is because a patent application remains secret until it publishes, which as a general rule will happen at or before 18 months after filing.  At this point in time a true and meaningful search can be done, and claims can be written so as to overcome the prior art that actually will apply to the invention.  Before this time we are only writing claims based on what the state of the prior art was 18 months before, full well knowing that there will be many additional patents the examiner can use against us.  This is a ridiculous waste of time and energy by the attorneys, and forces examiners to examine claims that could not have possibly been drafted considering the latest and likely most relevant prior art, particularly in fields having great patent activity.

Once the universe of prior art is known to the patent examiner and to the applicant or applicant’s attorney, an initial interview should be had between examiner and applicant/attorney.  The most relevant prior art should be identified and discussed, the invention explained and why the claims are believed to be patentable over the now closed universe of prior art.  In order to be a meaningful exchange of useful and relevant information, this interview must be off the record.  To facilitate speedy action by the USPTO more, better and fair information needs to be conveyed, but given the Federal Circuit’s unwillingness to acknowledge the PTO definition of the duty of candor, and their inability to define a bright line test for inequitable conduct that both adheres to precedent and is followed by all panels, in order to get such necessary, proper and truly useful information it needs to come with the promise of confidentiality, which will eliminate the fear that this candid discussion can be used to demonstrate inequitable conduct, which is the 800 pound gorilla in the room that no one, save Senator Orrin Hatch (see second paragraph), seems concerned about.

A process like this will do far more than deferred examination ever could.  Having said that, I know deferred examination is all but certain to happen and rational proposals like this one have little chance of success because it would require at least some Congressional action.  Thus, if we are going to have deferred examination why not just announce that anyone with an application pending for more than 3 years can move to the front of the line by payment of a $1,000, $1,500 or $2,000 “rapid examination fee.”  You could even charge this much for small entities and double it for those who do not qualify for small entity status.

I have multiple applications pending and I know I would pay a fee to get an examination and a patent, and I hear many others say the same thing.  So those large companies that are just filing to get numbers would go to the back of the line and innovators and small businesses, which are the engine that drives the US economy, would pay a fee to move to the front of the line so they can get the assets they so desperately need to be competitive and attract investors and funding.  This would also solve the budget crisis, allow for examiners to get overtime again and the Office potentially to hire more examiners to dig into the backlog.  It would also get innovations out of the logjam that are valuable enough to generate this additional level of expenditure, which should mean commercially relevant and viable innovations would get patented ahead of those that are not commercially relevant and viable.  That certainly seems to be in line with the Constitutional mandate to foster innovation.