Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore

Transcription

1 Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore The U.S. Patent and Trademark Office (USPTO) dockets new patent applications for examination in the order of their domestic filing date, and typically will not advance a filed application out of turn. 1 Because the USPTO cannot examine applications as quickly as it receives them, there is backlog of filed but unexamined applications. As of February 2011, the backlog consisted of 718,857 unexamined applications. 2 This backlog has caused a delay on average of two years or more from filing an application until receiving a first USPTO action. The actual delay varies based on the particular technology center or group art unit. 3 However, even in technologies that have the shortest time to first action semiconductors, circuits, and optics new applications still must wait twenty months from filing for examination to begin. 4 For most applicants, waiting more than two years for examination is an unappealing prospect. Having a patent application on file, by itself, confers no enforceable rights. 5 When the application is published 18 months after filing, the applicant may in some circumstances enjoy a provisional right to a reasonable royalty for any infringement occurring between publication and issuance of the patent. 6 But this provisional right cannot be enforced unless and until the patent issues, and the provisional right is lost if the patented claims are not substantially identical to the claims in the published application. 7 An applicant who presently needs a patent s exclusionary rights to bring suit to stop competitors from practicing the invention, for example, or to secure a third party s investment to develop an invention commercially often can do nothing. The status quo involves a lot of waiting C.F.R (a). Bob Stoll, Commissioner for Patents, January Patents Dashboard Changes and COPA, (February 14, 2011). USPTO, Patent Pendency Statistics, (last visited Mar. 1, 2011). See 35 U.S.C. 271(a) (2006) (defining patent infringement as activity occurring during the term of a patent). 35 U.S.C. 154(d).

2 Fortunately, though, there are strategies for advancing an application out-of-turn. One is the USPTO s Accelerated Examination program. Accelerated examination not only brings an application to the front of the line for a first action, but as an added benefit, it also gives priority to the application for the remainder of the examination process. To make an application eligible for accelerated examination, however, an applicant must follow specific guidelines that can be expensive to abide by and may limit future patent rights. As an alternative to following those guidelines, an application can be advanced whenever an inventor is age 65 or over, or is in poor health. Early examination also is available under the Patent Application Backlog Reduction Stimulus Plan when an applicant has multiple unexamined applications, or under the Patent Prosecution Highway program when a domestic application has a counterpart application allowed by a foreign patent office. Applicants with large patenting programs are more likely to benefit from these programs. Finally, waiting in the wings is the USPTO s Three Track program, which will allow any applicant with enough money to simply pay for immediate examination. The Accelerated Examination Program The USPTO s Accelerated Examination program is the most broadly available means to advance examination of an application. 8 Applications enter the program upon the granting of a petition to make special, and are then given an internal designation by the USPTO that makes them unlike any other application: not only are applications in the Accelerated Examination program advanced for a quicker first action, but the subsequent pace of examination also proceeds faster than usual. 9 In fact, the USPTO s goal for accelerated examination is to reach a final disposition typically a notice of allowance or a final rejection within 12 months of filing. 10 The pace of accelerated examination continues should prosecution resume after the final disposition, as may happen when the applicant files a request for continued examination. To achieve the 12-month goal, the USPTO imposes several requirements that must be followed for a petition to make special under the Accelerated Examination program to be granted. 11 First and foremost, all requests to enter accelerated examination must be made at the time of filing; only new applications can be accelerated. 12 An applicant desiring accelerated examination for a previously-filed application must file a new continuation (or continuation-in-part) application to be eligible. 13 Additionally, if a See USPTO, Manual of Patent Examining Procedure (a) (8th ed., 8th rev. 2010) (hereinafter MPEP) (a)(III)-(VI) (a)(VIII)(F) (a)(I). Accelerated Examination FAQs, supra note 28, at 6-7.

3 restriction requirement is made in a pending application, a new divisional application will be eligible for accelerated examination. 14 The application must be complete upon filing, including all formalities and the filing fees, and there cannot be any deficiencies in the specification, claims, or drawings. For example, the USPTO will deny a petition to make special if replacement drawings are required, or if the inventor s declaration is missing. The application cannot contain more than three independent claims, or more than 20 claims total, and an additional $130 petition fee must be paid on the filing date. The petition fee is waived, though, if the invention claimed in the application promotes environmental quality, contributes to energy conservation, or combats terrorism. 15 Entry into the Accelerated Examination program requires an applicant to conduct a preexamination search of the prior art prior to filing, and to submit a detailed statement describing the pre-examination search, including what sources of prior art were searched, what search logic was used, and when the searches were conducted. 16 The sufficiency of the search is critical because the scope of the search and its results, as set out in the statement, will be heavily scrutinized before the USPTO grants a petition to make special. If the USPTO determines that a pre-examination search is deficient, the applicant is given a single opportunity to correct the deficiencies in a supplemental search. It is the applicant s responsibility to determine the scope of the supplemental search. While the USPTO will provide some suggestions to an applicant whose search is found deficient, it will not detail everything that must be done to correct the deficiencies. In practice, the pre-examination search should match a typical USPTO examiner search during prosecution. The USPTO provides only general guidelines for the preexamination search. 17 For example, the pre-examination search must extend to commercial databases and other non-patent literature sources unless the applicant can provide good reasons why searching in those areas would not yield pertinent results. 18 The USPTO typically will not accept anything less than a broad and thorough search of non-patent literature. Luckily, the pre-examination search can be conducted by a third party such as a prior art search firm, and delegating the search to an experienced searcher is highly recommended. This is particularly true for applicants who are not proficient in prior art searching or who are not familiar with where and how examiners search prior art See MPEP, supra note 8, (a)(VIII)(C). 37 C.F.R (c) (a)(I). USPTO, Guidelines for Applicants under the New Accelerated Examination Procedure 2-4, at 3.

4 A petition to make special under the Accelerated Examination program also requires the submission of an examination support document. 19 Conforming with this requirement can be risky. In the document, the applicant must identify which prior art references uncovered during the pre-examination search are most relevant to the claims. The applicant then must explain, in considerable detail, how each claim is patentable over the identified references. The explanation must address both novelty under 35 U.S.C. 102 and obviousness under 103. And, for each of the identified references, the applicant must list the features of the claims which are taught by that reference, and where those features are taught. This can generate a significant number of admissions, particularly in the form of applicant admitted prior art which the examiner can rely on during examination, and which a court may rely on during subsequent litigation. A desire to avoid estoppel will cause some applicants to shy away from pursuing accelerated examination, and will cause others to attempt to minimally acknowledge the teachings of the prior art in the examination support document. However, with respect to the latter, the USPTO independently reviews the most-relevant prior art, however, and an applicant who has not been candid and completely forthcoming when characterizing the prior art will have its petition to make special denied. Applicants must also include in the examination support document a showing of how each and every claim, feature by feature, is supported by the disclosure of the application. While this showing gives the USPTO a basis for interpreting the claims, it too necessitates admissions that may be used by an accused infringer to support a narrow claim construction. The potential estoppel effect of the petition to make special will cause many applicants to decline pursuing the Accelerated Examination program. However, applicants who are anxious to obtain patent rights as quickly as possible to begin litigation or aggressive licensing will find the benefits of choosing to pursue accelerated examination to outweigh the downsides. Indeed, an application with few claims also may be wellsuited for the program because the complexity of the examination support document is reduced. And if an applicant desires claims that cover a single commercial embodiment, the estoppel effect of the examination support document is minimized because good protection can be obtained despite any claim narrowing arising from the showing of written description support. In any event, though, the speed of accelerated examination and the need to urgently enforce a patent should be the primary motivation for choosing the Accelerated Examination program. Most applicants who do not foresee such an urgent need for patent protection do not need to incur the expense and risk of accelerated examination. 19 MPEP, supra note 8, (a)(I).

5 A Green Alternative The USPTO currently is conducting a Green Technology pilot program that, in many respects, mirrors the Accelerated Examination program. 20 However, the pilot program does not require a pre-examination search or preparation of an examination support document, and both new and filed applications are eligible. 21 The obvious limitation of the pilot program is that it is only open to green technology inventions those that improve environmental quality, conserve energy, develop renewable energy, or reduce greenhouse gas emissions. Like the Accelerated Examination program, applications in the Green Technology pilot program are advanced out-of-turn and examined on an accelerated schedule. The pilot program is available through December 31, A Simple (But Limited) Alternative Applicants who decide against the Accelerated Examination program and are ineligible for the Green Technology pilot program may have another way to bypass the USPTO backlog. A long-standing USPTO rule permits an application to be advanced out-of-turn for examination when the inventor reaches age 65, or develops a health condition likely to interfere with the inventor s ability to assist with prosecution of the application. 23 Under these circumstances, an application can be advanced merely by filing a petition to make special accompanied by evidence establishing the inventor s eligibility. 24 A petition based on age simply requires either a statement by the inventor that he has reached age 65, or a statement by the inventor s representative that he has documentation, such as a copy of a birth certificate or driver s license, proving that the inventor is at least A petition based on health must be accompanied by written evidence, such as a doctor s certificate, showing that the inventor may not be able assist with prosecution should the application proceed to initial examination in its normal course. 26 In either case, there is no fee for filing the petition Pilot Program for Green Technologies Including Greenhouse Gas Reduction, 74 Fed. Reg. 64,666 (Dec. 8, 2009). USPTO, Comparison Chart of Domestic Acceleration Initiatives 2, [hereinafter Acceleration Initiatives]. Expansion and Extension of the Green Technology Pilot Program, 75 Fed. Reg. 69,049 (Nov. 10, 2010). 37 C.F.R (c). MPEP, supra note 8, (III)-(IV). Acceleration Initiatives, supra note 21, C.F.R (c)(1).

6 Advancement due to inventor age or health is available in applications naming multiple inventors so long as at least one inventor has turned 65 or fallen into poor health. 28 A petition to make special filed in a pending application can be granted at any time before the USPTO acts on the application, so long as the inventor is eligible, and will result in an accelerated first action. Unlike the Accelerated Examination program, however, an application advanced based on the inventor s age or health will not be examined at an accelerated pace subsequent to the first action. Advancing by Abandoning Another pilot program being conducted by the USPTO the Patent Application Backlog Reduction Stimulus Plan allows an applicant with co-pending nonprovisional applications to obtain early examination of one application by voluntarily abandoning the other. 29 To be eligible for the Plan, the two applications must: be unexamined; have actual filing dates prior to October 1, 2009; and have a common owner as of that date, or name a common inventor. 30 An applicant is eligible to use the Plan s procedures to advance up to 15 applications, but each abandoned application can support the advancement of only one application. 31 The Plan is available through December 31, Advancement of an application under the Plan requires papers to be filed in both applications. A letter of express abandonment must be filed in the application to be abandoned. 32 The letter must state that the invention in that application will not be claimed in any other application, and that no other application claims (or will claim) priority to the abandoned application. The applicant thus is barred from patenting anything disclosed in the abandoned application. In the application to be advanced, a petition to make special must be filed. 33 The petition must request advancement based on abandonment by identifying the abandoned application and establishing how it relates, either by common ownership or inventorship, to the application to be advanced. A copy of the letter of express abandonment must accompany the petition. No fee is required for the petition See USPTO, Accelerated Examination FAQs 6 (2007), Patent Application Backlog Reduction Stimulus Plan, 74 Fed. Reg. 62,285 (November 27, 2009). at 62,286. Expansion and Extension of the Patent Application Backlog Reduction Stimulus Plan, 75 Fed. Reg. 36,063 (June 24, 2010). Patent Application Backlog Reduction Stimulus Plan, 74 Fed. Reg. 62,285, 62,286 (November 27, 2009).

7 An International Alternative: the Patent Prosecution Highway The Patent Prosecution Highway (PPH) is an international program between the USPTO, thirteen other national patent offices, and the European Patent Office (EPO). 35 Under the USPTO s implementation of the PPH, a newly-filed or pending U.S. application can be advanced for early examination when at least one claim in a foreign counterpart application has been allowed by a participating foreign patent office. 36 The foreign counterpart can be either a national application filed in any participating foreign patent office, or a Patent Cooperation Treaty (PCT) application filed in certain participating offices. 37 Thus, a favorable Written Opinion or International Preliminary Report in an eligible PCT application can support the advancement of a national-stage U.S. application. 38 A U.S. application in the PPH typically reaches examination within two to three months of entry into the program. 39 Like other ways of advancing an application, entry into the PPH requires a petition to make special. The precise form and content of the petition depends on which foreign office examined the counterpart application. However, the petition generally must include copies of the allowed claims, the actions by the foreign office relevant to the patentability of the claims, and a chart showing the correspondence between the foreign claims and the U.S. claims. English translations of the claims and the actions, if they are in a foreign language, must also be included. If there is prior art raised by the foreign actions that was not previously cited in the U.S. application, an information disclosure statement citing that art must accompany the petition. There is no fee necessary for filing the petition. Eligibility for the PPH has two primary limitations. First, the U.S. application must have been filed after (or on the same day as) the counterpart foreign application having the allowed claims. 40 On the other hand, a foreign application corresponding to an earlierfiled U.S. application can enter the PPH in the foreign country if that country participates in the PPH. Second, the U.S. application is eligible only if its claims correspond to (or See USPTO, Patent Prosecution Highway, (last visited Mar. 1, 2011). While the PPH program is itself permanent, PPH arrangements between the USPTO and some listed countries remain in the trial phase. USPTO, Patent Prosecution Highway, [hereinafter PPH Brochure]. The countries participating in the PPH are Australia, Austrian, Canada, Denmark, Finland, Germany, Hungary, Japan, Korea, Russia, Singapore, Spain, and the United Kingdom. The European Patent Office (EPO) also participates. For entry into the PPH, a counterpart PCT application must be filed in Japan, Korea, Austria, Russia, and Spain, or the EPO. PPH Brochure, supra, n. 36. USPTO, Patent Prosecution Highway Frequently Asked Questions,

8 are amended to correspond to) the scope of the allowed claims. 41 This limits the scope of protection that can be pursued in the U.S. application, and may be especially burdensome when the foreign and U.S. applications contain similar claims, yet only some of the foreign claims were allowed. A Glimpse of the Future: Prioritized Examination under the Three Track Program The Three Track program is a set of examination procedures that the UPSTO has proposed to allow applicants to exercise control when their applications are examined. 42 The USPTO recently notified the public of its intent to implement Track I of the proposal. 43 The procedure of Track I allows an applicant, upon filing, to elect prioritized examination of an application. Prioritized examination is, in effect, much like the treatment of applications in the Accelerated Examination program: the application is advanced to immediate examination, and examination proceeds at an accelerated pace. The public comment period for implementing Track I ended March 7, 2011, and the USPTO expects Track I to become available in Prioritized examination, in its currently proposed form, has its costs, literally. The fee for electing prioritized examination is slated to be $4,000 and its only significant limitation appears to be that an applicant is limited to a total of thirty claims, and only four independent claims. Prioritized examination would not require a pre-examination search or an examination support document. The application would be given priority through a final disposition such as a final rejection or the filing of a request for continued examination but after that final disposition the application will lose its prioritized status. In other words, prioritized examination will provide early examination of an application and two office actions on the merits. Conclusion There are a variety of ways applicants can avoid the USPTO s backlog. Each program bears a burden which may or may not be acceptable to an applicant. The Accelerated Examination program s broad eligibility can be countered by its cost and requirement for disclosure that some applicants may not be comfortable putting on the record. And the alternatives to the Accelerated Examination program only allow narrow types of inventions, require an applicant to forgo patenting a pending application, or require the occurrence of an event beyond the applicant s control. The cost of the future Track I program appears to be primarily financial. By carefully considering the various options available, examination and issuance of a patent can be accelerated to provide applicants with enforceable rights sometimes years earlier than they could otherwise be obtained Acceleration Initiatives, supra, n. 21, 5. Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, 76 Fed. Reg. 6,369 (February 4, 2011).