USPTO Pilot Programs Aimed at Alleviating Growing Backlog of Patent Applictions
24-Apr-2011 | News-Press Release
Ann Arbor –There are an unprecedented number of applications being made at the United States Patent and Trademark Office (USPTO), but the federal agency is responding with a wide range of options for those who don’t want to or can’t wait for the two year-plus timeframe it can currently take for the patent application and approval process. According to Michael S. Gzybowski, an attorney in the Ann Arbor office of Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the U.S., the USPTO is facing a growing backlog of more than 700,000 filed patent applications.
“That means on average, it takes almost 25 months after filing an application just for examination to begin,” Gzybowski explains. “Once examination begins, it can take an additional 10 to 36 months for an application to issue as a patent. And, if you need to appeal, it can take as long as 53 months. That timeframe is not an option for many filers,” he adds.
As a result, the USPTO offers a number of pilot programs and other proposals geared toward accelerating the examination process and reducing the number of applications entering examination. However, Gzybowski cautions the need to examine and consider the benefits and disadvantages that are offered by each of the following:
First-Action Interview Pilot Program
Launched in 2008 and limited to computer-related inventions, the program was enhanced in October 2009 to include additional technologies. It enables applicants to conduct an interview with examiners before a First Office Action is prepared. Approval is at the discretion of the examiner, and once approved, the examiner will conduct a prior art search and provide the applicant with a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner or schedule the interview.
Ombudsman Pilot Program
For applicants experiencing problems during the processing of applications, this program provides a representative who will call the applicant within one day for assistance in resolving the problem. The Ombudsman Pilot Program does not replace other existing resources available to patent applicants, attorneys or agents, but provides assistance if it is legitimately believed that examination has stalled and the normal channels have been ineffective.
Green Technology Pilot Program
This program allows applicants to accelerate the examination of applications pertaining to "green technologies." To participate, an applicant must file a petition (no fee required) and substantiate that the invention pertains to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas. If granted, the application will be advanced out of turn (accorded special status) for examination.
Peer Review Pilot Program
Initially limited to computer-related inventions when launched in June 2007, this program was expanded in October 2010 to include biotechnology, bioinformatics, telecommunications and speech recognition applications. It involves an Internet-based review process in which the public is allowed to review volunteered, published patent applications and submit technical references and comments on what they believe to be the best prior art to consider during the examination. Patent examiners can then use (and supplement) the submitted prior art to evaluate patentability of an application during the examination process.
Patent Prosecution Highway Pilot Program Quickly becoming one of the most popular programs for applicants that file internationally, this program acknowledges that many large companies file patents simultaneously in other countries. It allows participating patent offices in different countries to benefit from work that was previously done by another country's patent office, with the goal of reducing examination workload. When an applicant obtains a favorable examination in an office of first filing, the applicant can request that other participating countries accelerate the examination of the corresponding claims.
Missing Parts Pilot Program
This program allows an applicant to delay the payment of non-provisional application search and examination fees (currently $760 for a large entity) for up to 12 months from the filing date of a non-provisional application that claims priority to a provisional application.
Patent Application Backlog Reduction Stimulus Plan Under this plan, a small entity inventor who has more than one pending, unexamined application may abandon one application in exchange for another application being advanced out of turn (accorded special status).
Proposal to Extend Terms of Provisional Applications The proposal seeks to extend the term of a provisional application to 24 months. Currently a provisional application has to be converted into a non-provisional application within 12 months.
Proposed Three-Track System
The system gives applicants a choice of three tracks based on how quickly they want their applications processed. One track gives applicants "prioritized examination" after paying the fee to cover the cost of expediting the examination (high enough to deter inventors from using this track for all their patent applications). The second track is the traditional USPTO examination timeline, and the third allows applicants to delay examination for up to 30 months.
“In view of the fact that a number of these pilot programs were initiated a few years ago and have continually been extended and expanded, I believe that at least some of these programs, or perhaps similar programs, will be available for patent applicants to use for some time to come,” Gzybowski concludes.
Brinks Hofer Gilson & Lione is one of the largest intellectual property law firms in the United States and serves the intellectual property needs of clients around the world. Brinks has 150 attorneys, scientific advisors and patent agents who specialize in intellectual property litigation and all aspects of patent, trademark and copyright law. The firm also advises on issues relating to intellectual asset management, trade secret, unfair competition, and technology and licensing agreements. Brinks routinely handles assignments for companies in the electrical, chemical, and mechanical engineering sectors; the biotechnology, pharmaceutical and nanotechnology industries; and for companies whose work relates to Internet and computer technology law. The firm’s trademark practice works on behalf of clients who deal in a wide variety of products and services. Brinks is based in Chicago and has offices in Ann Arbor, Mich., Indianapolis, Ind., Raleigh, N.C., Salt Lake City, Utah, and Washington, DC. More information is available at www.usebrinks.com.
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