It is no longer news that the United States Patent Office is hopelessly behind, and many inventors and the companies they work for are waiting extraordinary periods of time to even get a patent examiner to pick up their patent applications for a substantive review. This has caused many inventors to indefinitely have their dreams, hopes and aspirations put on hold. Without an issued patent it is impossible for inventors and start-up companies to obtain funding, and when licensing offers are put on the table the terms are so low and the terms so bad that inventors and start-ups simply cannot take the deals. This is not intended to be an indictment of those who offer bad licensing deals. The truth is licensing offers are always inadequately low when a patent has not issued. Everyone knows that the further down the road to obtaining a patent you are the better any licensing deals become, and with a Patent Office that does not issue patents in any technologically relevant time frame inventors, start-ups and small businesses are the victims, and good innovations are not making their way out into the market. That means society is not benefiting from innovations, and these innovations, some of which could result in new industries with new jobs and jump start the economy, remain idle.
Increasingly, it is becoming necessary to think outside the box and come up with strategies that could help innovators achieve their goals, because the Patent Office backlog and inaction in Congress means we have to help ourselves. Help is not going to be coming anytime soon, even though recent moves by senior PTO Officials are indeed encouraging. The magnitude of the problem is so great, and only so much will be able to be accomplished without Congressional assistance, and even if Congress were to try and help they would most likely get it all wrong. I am not sure any more whether that is because so many in Congress are not knowledgeable of patent law and the economy, or whether it is because they simply don’t read legislation they vote on. Whatever the reason, there are only few in Congress who seem to care, and even fewer that seem to understand the issues. Yes, we are most definitely going to have to bail ourselves and our clients out rather than wait for assistance that is likely to come only after many innovations are obsolete.
One thing that we can do to at least attempt to help is seek patents in countries where patents can actually be granted in a reasonable time frame. Having at least one patent would allow for inventions to be lawfully claimed to be patented, and if a patent is issued in one jurisdiction then that would seem to make it far more likely that a US patent will issue, at some point. Perhaps this will be enough to encourage at least some investors and venture capitalists to invest with some confidence in the newness of the invention and the likelihood of obtaining a patent.
According to Jeff Sweetman, of Inovia, a company specializing in foreign filing and entry into the national phase as a result of filing an international application:
There may be commercial advantages to obtaining one or more granted patents quickly. Granted patents can boost the value of the applicant company, which might be helpful if the business is to be sold in the foreseeable future. Of course, there may be other commercial advantages too. Whilst patents in such major countries are obviously more desirable, patents obtained quickly and at relatively low cost in smaller jurisdictions may still be helpful. One option is to file a PCT application and a simultaneous Paris Convention application in countries such as South Africa, New Zealand or Singapore.
While it might not be extremely desirable to gain exclusivity in countries such as South Africa, New Zealand or Singapore, these countries do offer fast action on patent applications. Obtaining a patent in one or more countries can prove the value of the technology, because after all if it is new enough to be patented in other countries then it should be new enough to be patented in the United States, United Kingdom, Germany, Japan and other countries with larger, more desirable markets.
With respect to each of the three countries Sweetman points to, he goes on to explain:
South Africa has the advantage of being relatively low cost and very fast to grant. A disadvantage , or maybe an advantage, depending on your perspective, is that South Africa is not a substantive examination country. All applications proceed to grant assuming the relevant fees are paid and formalities met. By applying to expedite, grant can be achieved within six months of filing.
New Zealand is more expensive than South Africa, but still quite fast. Depending on technology and intended future filing destinations, full examination in New Zealand will often provide a better idea of likely patentability in other countries, due to having a relatively good quality substantive examination process. For a Paris Convention filing, grant can take as little as four months, although six to nine months is more typical. PCT national phase applications typically take over 18 months, but this can be expedited at additional cost.
Singapore is more expensive than either South Africa or New Zealand, and not as fast to grant. However, it is a major trading hub, particularly for high-tech products. There may therefore be an advantage in some situations to pursuing fast grant of a Singaporean application. Applications can be granted in as little as 15 months from filing, and in certain circumstances where an existing foreign patent has been granted, a PCT national phase application can be granted in as little as a couple of months.
I bet you never thought of obtaining a patent in South Africa, New Zealand or Singapore, right? As the time to obtain patents in the US continues to be exaggeratedly long, you might want to look into these and other countries that provide the promise of a patent before the technology involved becomes irrelevant.