Posts Tagged ‘patent prosecution’

Green Means Go! Accelerated Examination of “Green” Inventions at the U.S. Patent Office

January 27, 2010

In a pilot program recently announced by the U.S. Patent and Trademark Office (“USPTO”), many environmentally-friendly patent applications may obtain special status and be examined out-of-turn without the most burdensome aspects of previous programs.  Benefits for qualifying applications include reduced documentation and burdensome pre-examination analysis by the Applicant and quicker review by Examiners.  It is estimated that this program could shave as much as a year or more off the pendency of a so-called “green” patent application.

Anyone who has attempted to navigate the bureaucratic world of the U.S. Patent and Trademark Office knows that it is a world of wait, wait, and then wait some more.  A typical patent application filed at the U.S. Patent Office may pend for thirty months or more before obtaining a first examination.

There are ways to accelerate the examination of an application, but the requirements are unduly burdensome.  Before August 25, 2006, an Applicant could request acceleration of an application for a whole host of specially defined reasons, including infringement, Applicant’s health or age, for environmentally-friendly or energy conservation applications and for countering terrorism, to name a few.  Since August 25, 2006, the scope of applications allowed to obtain special status has expanded – any utility application may petition for special status.  While this may sound like a positive step, the catch is that the burden placed on Applicants is so large, Applicants rarely take advantage of accelerated examination.

Specifically, a petition to make special (except due to a person’s age or health) requires that the Applicant conduct an extensive search including foreign patents and non-patent literature (a search is not currently required by the U.S. Patent Office for “normal” applications) and submit an “examination support document” requiring an identification of ALL limitations in the claims of the application that are disclosed by the references deemed “most closely related.”  But this is not the end of it –  the Applicant must also submit a “detailed examination of how each of the claims are patentable over the references cited.”  In essence, Applicants are required to do the work of the Examiners.  It is easy to see why not many participate in this accelerated examination program.

However, on December 8, 2009, the U.S. Patent Office announced it would accelerate the examinations of applications pertaining to certain green technologies, such as applications pertaining to environmental quality, energy conservation, development of renewable resources or greenhouse gas emissions reduction.  This new program makes it much, much less burdensome for those wanting accelerated examination of their green inventions.

The good news with the “green pilot program” is that no search is required, nor is an examination support document necessary.  Therefore, the most burdensome requirements of the accelerated examination program have been removed for green inventions.  In addition, (as with previous acceleration programs) the petition fee of $130 for accelerated examination is waived for green inventions.

Once again, there is a catch (a few, to be precise), but the burden placed on Applicants is not nearly as heavy as before.  The catch is that the USPTO will accept “only the first 3,000 petitions” filed before December 8, 2010, unless the program is extended.  In addition, an Applicant must satisfy some other simple requirements, and the subject matter of the application must fall within one of the “green” classifications specified.  Moreover, the application must have been filed before December 8, 2009.

But this pilot program for the acceleration of green patent applications should prove to be very enticing to Applicants interested in obtaining quicker examination of green inventions at the USPTO.  And hopefully, the USPTO sees the value and extends it so that many more Applicants with green inventions may take advantage of this program.

Why patent?

September 21, 2009

If you own a business, or simply tinker in your basement, you may have an idea that is potentially worth a lot of money.  But once you tell others about your idea, or even try to capitalize on your idea, how do you stop someone else from simply swooping in and profiting  from the fruits of your own labor?   The only way to truly stop someone else from copying your idea is to obtain exclusive rights on your idea through filing for patent protection, if possible.  A  patent is of utmost importance to claiming ownership of the idea.

Most people are familiar with the concept of a patent, but if you are like most people, you  may not understand what a patent gives to you and what it does not.  A United States patent grants the inventor (or owner, if assigned to another person or entity) the exclusive right to make, use, sell, have made, or import into the United States the product or process that is described and claimed in the patent.

What this means is that, if you own a patent on your invention, you generally have the right to stop others from making, using, selling or importing your invention in the United States.  The patent gives you a monopoly on your idea for a certain period of time.  The government, in exchange for that monopoly power, simply requires that the patent describe how to make and/or use your claimed invention.  This quid pro quo allows ideas to be published in the marketplace, and in exchange the government gives you a limited period of exclusive use.

What a patent does not provide is the right to make, use, sell, or import your own invention.  This is a common misconception of what a patent owner actually can do with a patent.  In other words, an inventor does not need to have a patent to make, use, sell, or import a product or process in the United States.  But without a patent, an inventor cannot stop others from copying it.

Many times, clients inform me that they are less inclined to file a patent application for their idea because they have no intention of actually going out and pursuing an infringer.  After all, patent infringement lawsuits cost a LOT of money, and individual inventors or small businesses may not have the resources to fund an infringement suit.

But there are many reasons why it is important to obtain patent protection for your idea.  First, for a small business owner or an inventor, the patent is an asset – a piece of property that can be sold or licensed.  You may not have the ability to pursue an infringer, but the patent may be worth a lot of money to a larger entity that may just have the ability to enforce it.  Without a patent, you may not be able to sell or license your invention.

Second, believe it or not, there are individuals and companies out there that do not desire to infringe someone’s patent rights – either because of the risks involved in a potential lawsuit, the notoriety of being labeled “an infringer,” or simply for altruistic reasons. Many times, clients will approach me with their idea and we will spend time determining whether they can make, use, sell or import it – so we conduct a search and provide them with a review of the relevant patents – a so-called “clearance search” that can lead to a “freedom to operate opinion.  In many cases, clients will change their product or scrap their plans altogether if one or more patents exist that would cover what they planned to do.  In this regard, the patent has done its job without the patent owner even knowing!  Of course, it is very difficult, if not impossible, to quantify how much this may benefit a patent owner.  But it happens – I have seen it.

Finally, since a patent grants the owner exclusivity to practice their invention and is not a right to practice their invention, there may be competing interests in an idea, and a patent may help leverage against an infringement lawsuit by the owner of a broader patent.  For example, if you, as an inventor, develop an improvement by adding a novel feature to an existing product, there may be a broad patent to that existing product owned by another party.  Therefore, the other party may be able to enforce its patent rights against you preventing you from making, using, selling or importing that existing product.  However, your own narrower patent may be enforceable against the other party if they try to practice the improvement.  Many times, cross-license agreements may be arranged allowing both parties to practice the inventions – you can make, use, sell or import the broad product and the other party can make, use, sell or import the improvement.  And thus, an inventor would have avoided an infringement lawsuit because of his or her patent.

So, besides simply providing a concrete embodiment of your idea that allows you to restrict others from making, using, selling or importing your invention, a patent provides a host of other benefits, some of which are described above.  Simply put, it is important to protect your intellectual property for the long term benefit of yourself or your company.  Do not sell the long-term value of your invention short by saving a little bit of money up front by foregoing getting patent rights on your invention.  You may not realize it now, but you may end up regretting it in the future.