Posts Tagged: "patent pendency"

In early 2019, we undertook a comprehensive research project to develop a forensic understanding of European Patent Office (EPO) oppositions, particularly in the life sciences sector, analyzing EPO opposition data in far greater depth than in any publicly available report. We examined more than 5,000 opposition cases filed at the EPO over the last 10 years and studied the timelines for hundreds of life sciences oppositions. The resulting report, entitled EPO Opposition Trends in the Life Sciences Sector, offers a granular understanding of the EPO opposition procedure and its various nuances. Introduced in July 2016, the EPO’s streamlining initiative was designed to simplify opposition proceedings and deliver decisions more quickly, thus providing “early certainty”. The EPO’s target pendency is 15 months by 2020 (opposition pendency here being measured from expiry of the nine-months-from-grant period for filing an opposition to the Opposition Division issuing its decision). Our research revealed that the streamlining initiative is on track to meet its target in the life sciences sector. The mean opposition pendency has been reduced from just over 22 months in 2015 (pre-streamlining) to 17 months in 2018 (post-streamlining).

The U.S. Patent and Trademark Office recently released its 2018-2022 Strategic Plan, setting various goals to ensure high quality services for the agency’s customers and stakeholders aligned with the Department of Commerce’s strategic objective to strengthen intellectual property protection… “We are confident in attaining the goals set out in this plan and look forward to the continued engagement and feedback from our stakeholders and employees,” Director Andrei Iancu is quoted as saying in a press release issued by the USPTO upon the release of the new strategic plan. “Together we celebrate innovation and entrepreneurship—we are very proud of the men and women who stand behind a well-balanced American intellectual property system.”

Inasmuch as the new Director can change, or do whatever they want once in the job, and will be subject to political winds, I thought I’d just tell them what I want and why. Simple. Here’s my list. First, believe in your product and the team that produces the product. Stop the labeling of “legitimate patents” as compared to other, presumably, “illegitimate patents”. There is only one type of patent, the one produced by the PTO. End of story. Each receives the examination it can in light of the fees paid. Each examination is done according to the laws and rules set forth in the statute and in accord with the CAFC administration of that statute vis-à-vis the PTO. This is true across all technologies. Examiner’s do the best they can with the tools available. This includes training, searching, and examining. The PTO does not favor one group over another. It calls balls and strikes in light of the relevant statute or rule.

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.

The fundamental patent bargain has been perilously breached by forcing publication on every application. Sound policy would have avoided upsetting the core patent bargain – disclosure upon grant of exclusive rights – and would have provided an equitable incremental quid-pro-quo: applicants can reap the additional optional benefit of deferral of examination for several years in exchange for early disclosure of their application. That way, applicants who do not wish to defer examination would then be unaffected and their core patent bargain would have been undisturbed – disclosure only upon grant of exclusive rights… Those who push for 18-month publication of all applications have it all backwards. Non-publication is not the problem – it is the solution.

“Time is money” rings especially true for those pursuing patents at the USPTO. Anyone who has previously dealt with this organization can attest to the fact that it is slow moving and extremely costly. Being that this single government entity is charged with processing upwards of 600,000 patent applications per year, the speed at which it operates is unsurprising. However, what is surprising is the substantial variance in speed at which each technology center and individual art unit operates. For example, technology center 2900 has the quickest average time to disposition while technology center 2400 has the slowest.

The fact is, patent examiners are struggling with the application of 35 USC 101 in light of the Alice decision just as much as everyone else. Greater uncertainty among both patent applicants and patent examiners surely increases the likelihood of disagreement between them. Thus, the Alice decision will not just increase the number of rejections under 35 USC 101, but is also likely to result in more rebuttals by applicants and more appeals of examiner decisions. A loss in patent examination efficiency, even if small, will act as a headwind against further reductions in patent pendency.