The Puget Patent Blog

Fast Route to a Patent (Part II) or, A Utility Patent Issues In Only Five Months

Posted Tuesday, May 12, 2015.

I am pleased to have Seattle-based Bucky as a client. Bucky is a purveyor of natural health and travel products, including the original U-shaped neck pillow seen on airliners everywhere.

Bucky recently had me prepare a utility application for a patent. Concerned about possible copying of the invention, obtaining a patent as quickly as possible was a priority for them. I suggested the Track One accelerated examination program, about which I’ve previously written.

To review, the Track One program allows a certain number of participants every year to pay the patent office a surcharge and receive fast examination of patent applications. The USPTO’s goal is to either issue or finally reject patents under the Track One program in 12 months or less. I have seen good results with this program as several of my clients have received their patents quickly with Track One.

In the case of Bucky, I filed the patent application I drafted for them last December 17th, and filed it with the Track One request. The patent, U.S. Patent No. 9,028,383, issued 146 days later on May 12th, 2015. That’s under five months from filing to issuance.

While I previously had a patent issue in 78 days, that was a design patent application using the expedited examination request program for design patents. 146 days is the fastest I have ever seen a utility patent issue, however.

The factors driving the length of pendency (pendency being the time from filing to issuance) vary. They include how quickly the application is assigned to an examiner, how broadly or narrowly the invention is claimed, how quickly the applicant can respond when the examiner takes action, and how quickly issue fees are paid when the application is allowed, among other things.

For Bucky, obtaining the patent using the Track One program means the invention is protected from copiers before it even hits the market. What is the additional cost at the time of filing for obtaining patent protection so quickly? The patent office currently charges a $2070 surcharge for small companies, and there’s a nominal charge for preparation and filing of the request. Individual inventors who qualify for the patent office’s micro-entity discount pay only $1035 for the Track One program. (These costs are in addition to the charges to prepare and file a patent application for regular processing.)

It’s a small fee to pay when considering that the patent grant of exclusive rights can begin two years sooner. What would that competitive advantage for two additional years at the beginning of a new product’s lifespan be worth? In many situations, it would be worth far more than $2070. Savvy businesses like Seattle-based Bucky recognize the value and take advantage of Track One. And they make great pillows, too.

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Can patents be kept a secret?

Posted Saturday, May 9, 2015.

I am asked occasionally whether patents or patent applications can be kept secret.

Once a patent is issued, patentees can’t keep the patent secret. One function of a patent is to provide notice to the public of how not to infringe the patentee’s intellectual property right that was granted by the government. Just as a county recorder’s office keeps plat maps available for review which show the boundaries of real property obtained by landowners, the patent office maintains a patent database which shows the boundaries of intellectual property obtained by patentees.

If the county did not keep such real property information and plat maps, nobody would know whether they were trespassing on private land. Similarly, if there was no means of accessing patents, the public would not be able to determine whether a proposed invention would “trespass” on a patentee’s intellectual property (i.e. infringe the patent).

However, patent applications may be kept secret, but that usually includes only patent applications filed in the U.S. Patent and Trademark Office.

Patent applications are published in the U.S. by default 18 months after filing. In the U.S., applicants may request that the patent office not publish a patent application at the time the application is filed. In such a case, the invention would not be made public by the patent office until such time as the patent office issued the patent. If the application never matured into a patent and non-publication had been requested at the time of filing, the contents would never become public.

On the other hand, while an application is still pending, it can be useful to be able to serve the publication on third parties who may be infringing a patent that would eventually issue. Doing so provides notice of possible infringement, which may entitle the applicant to damages for a period beginning from serving the notice. For that reason, I often request early publication of patent applications for my clients, such that the application is published only four months after filing instead of 18. (There is no patent office fee for requesting early publication.) Unless a client specifically tells me they want to keep the invention a secret, I want them to have the publication available as a tool for serving competitors if needed.

Outside of the U.S., patent applications usually can not be kept secret because the World Intellectual Property Organization doesn’t permit it. One may not request non-publication when filing an international patent application. So, if the applicant files an international application claiming priority to a U.S. application, the applicant has no means of requesting non-publication of the international application and it will be published 18 months after filing. In fact, if non-publication was originally requested upon filing in the U.S., and the applicant later decides to file internationally, the non-publication request must be rescinded.

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Leadership Changes at the USPTO

Posted Thursday, April 23, 2015.

In February of 2013, David Kappos left his position as the Director of the United States Patent and Trademark Office. Upon his departure, Deputy Director Teresa Stanek Rea became Acting Director, and held the post through November of 2013. Margaret Focarino, who had been Deputy Commissioner for Patents filled in through January 2014, at which time Michelle Lee became Acting Director.

Ms. Lee had been Director of the Silicon Valley USPTO satellite office and became Deputy Director following her move to the USPTO’s main campus in Alexandria, VA. She was subsequently nominated for the position of Under Secretary of Commerce for Intellectual Property and the permanent Director of the USPTO position by President Obama in October 2014. Ms. Lee sat for two Senate confirmation hearings, and was approved unanimously by the Senate Judiciary Committee on February 26th. The full Senate confirmed her on March 9th.

Director Lee has now been sworn in. She is the first woman to hold the position since the official creation of the Patent Office in 1836. Interestingly, the swearing-in ceremony took place on March 12th at the SXSW festival in Austin.

The ascendancy of Director Lee left a void at Deputy Director. That position has also now been filled. Russell Slifer, formerly the Director of the Rocky Mountain USPTO satellite office, was appointed following Director Lee’s swearing-in. Mr. Slifer was subsequently sworn into his new position on March 25th.

Additionally, a new Deputy Commissioner for Trademark Operations, Meryl Hershkowitz, was appointed. Ms. Hershkowitz reports to Commissioner of Trademarks Mary Boney Denison and has been with the USPTO since 1990, starting her career as a trademark examining attorney.

In short, the leadership at the USPTO is fully staffed, including a confirmed Director, for the first time in two years.

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Cost Of Foreign Patent Filings To Be Further Reduced

Posted Friday, March 27, 2015.

The process of seeking patent protection outside the United States often begins with a PCT application. PCT stands for Patent Cooperation Treaty. A PCT application is similar to a U.S. application for a patent. However, upon being received by an authorized receiving office, the application is forwarded to the World Intellectual Property Organization (WIPO) offices in Geneva, Switzerland. An international search is then performed.

For small and micro-entity inventors, the filing fees for a PCT application are substantially higher than in the United States. As I have previously written, the discounts offered to small companies and individual inventors for patent fees are a bargain compared with the rest of the world. Those discounts are not extended by WIPO, however, making PCT applications a much more expensive proposition.

Fortunately, changes in currency exchange rates are likely driving these costs down. PCT fees were previously reduced on January 1, 2015. Now, the fees paid to certain foreign offices to perform the international search are being reduced, effective April 1. When the international search is ordered from the European Patent Office, for example, the search cost is being reduced from $2,366 to $2,125.

Obtaining patents outside the United States can be costly. The reduction in cost for the international search taking effect April 1 is welcome.

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9 Million Patents

Posted Wednesday, March 25, 2015.

I received an issue notification for a client today informing me that the projected patent, which will issue on April 7, 2015, will have a patent serial number beginning with a 9.

The USPTO has been increasing the number of patents issued every year. It was only in 2011 that we crossed the threshold into 8-series patents (August 16, 2011 to be exact). Since patent serial numbers are issued sequentially beginning with U.S. Patent No. 1 (which issued in 1836), that means 9 million patents have been issued under the current numbering system.

Patent number 1,000,000 issued in 1911, so it took 75 years for the first million patents to issue. Now it takes less than four years for a million patents to be issued. With 8,000+ patent examiners now employed by the USPTO, and new accelerated examination initiatives, the production rate is very high.

Congratulations to the inventors whose collective innovation has resulted in nine million patents!

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