-- "Strategic Goal 1: Optimize Patent Quality and Timeliness" --

-- "Why Is A Patent Search Important?" --

-- "USPTO 2008 Fiscal Year-End Results Demonstrate Commitment to Sustaining High Performance
-- Patent and Trademark Operations Rose to Highest Performance Levels in Agency’s History" --

-----------------------------------------------------------------------------> >
 President's Strategy for American Innovation
Posted Wednesday, September 30, 2009 by Jim Ruttler.

The Executive Office of the President has released a paper detailing the President’s strategy for American innovation. The essence of the paper is that bubble type growth in dot coms, housing, and finance are not sustainable drivers of economic activity. The President suggests that a returned focus on innovation is necessary for Americans to thrive in an increasingly competitive global economy. In order to achieve the goal of an innovation based economy, the President seeks to promote research, invest in education, improve our physical infrastructure, increase internet access, open capital markets, and implement policies that encourage innovation. Notably, the President believes that the government’s role should be in providing tools to foster innovation. With respect to the U.S. patent system, the paper stated:

“Intellectual property is to the digital age what physical goods were to the industrial age. We must ensure that intellectual property is protected in foreign markets and promote greater cooperation on international standards that allow our technologies to compete everywhere. The Administration is committed to ensuring that the United States Patent and Trademark Office has the resources, authority, and flexibility to administer the patent system effectively and issue high-quality patents on innovative intellectual property, while rejecting claims that do not merit patent protection.”

The paper can be read in its entirety at: http://www.patentlyo.com/sept-20-innovation-whitepaper_final.pdf.

-- -- The Independent Inventor gets a fair representation at the USPTO:

--------------------------------------------------------------------------------------------------> >
-- -- "How Inventors Can Deal with the Patent Backlog”
By Don Debelak of One Stop Invention Shop

As you probably have heard, the US Patent and Trademark Office (USPTO), has some problems. - For a number of years, there has been a battle raging over patent reform, with new Patent Acts proposed about every other year. The biggest problems facing inventors involve the backlog of patent applications. Not only can it take years to receive your patent, but also the Patent Office, in an attempt to deal with the backlog, is rejecting applications at record rates. This is certainly bad news for inventors, but if you read on, you can gain some tips in dealing with these problems.

At the end of 2008, there were over 1,200,000 total patent applications pending; about 800,000 of which were still awaiting first action. On average, it took 25.6 months for the Patent Office to take its first action with an application, despite the fact that under normal circumstances, it is only supposed to take 18 months for a patent to be issued! This is a serious and growing problem.

At the same time, there has been a lot of pressure for the quality of patents to increase. The Office of Patent Quality Assurance randomly pulls newly issued patents and reviews them. If they think the patent should have been rejected, the Patent Examiner who reviewed the application will get negative marks in his or her Performance Reviews. Then the Performance Reviews are used to determine employee bonuses. The result: Examiners err on the side of caution so that they don't lose their bonuses.

Furthermore, rejecting applications is the easiest way to make in-house work quotas and cut down on the backlog. To give you an idea on how much this has affected the way Examiners work, consider this: In the late 1990s, Examiners rejected less than 30% of all Patent Applications; in the second quarter of 2009, they rejected 59%!

Compound these difficulties: Two recent cases, KSR v. Teleflex and In Re Bilski, have also caused more changes and challenges for Patents. - KSR v. Teleflex was a case heard by the Supreme Court, that has changed the way "Obviousness" is defined for Patent Allowances, making it much more difficult to prove your Patent Application is "Non-obvious." - In Re Bilski, is a Lower Court Decision that greatly restricts Business Method Patents.

Is there hope? Yes. - The USPTO is starting to make some changes: First, the former USPTO director, John Dudas, resigned and soon there should be a new Director appointed who will hopefully turn the Patent Office around. Also current Acting Commissioner, Peggy Focarino, is starting some initiatives to train Examiners to work more efficiently and allow more Patents. Furthermore, In Re Bilski, is currently in front of the Supreme Court and many are hoping that the decision will be turned over. In addition, there is talk that Congress might legislate over KSR v. Teleflex to make it easier to receive Patents again.

So what should Inventors do to deal with these challenges? - We talked with Eric Hanscom, our Patent Law Associate, about how he is advising Inventors dealing with these challenges and what actions he has taken to deal with these changes.

"Our strategy in dealing with KSR and Bilski, is to examine the Office Actions, and in the many cases where the Application would have been likely to be allowed before KSR and Bilski, but is not probably 'not allowable' under the new laws, to file a Continuation-In-Part (CIP) Application and hope that the laws change before the CIP is examined," says Hanscom. With the long wait times at the USPTO, the chances are pretty good that something will change before a CIP is examined. The same goes for those who are facing Final Rejection. "We are also suggesting," says Hanscom, "that clients who are facing a 'Final Rejection', consider filing for RCE's (Requests for Continued Examination) or even appeal the Rejections." This again will buy them time and give them a chance to have changes take place before their Application is Re-examined.

To better deal with this situation, Hanscom has hired a former USPTO Examiner to help go over Office Actions and advise on strategy to get around KSR v. Teleflex and In Re Bilski.

Hanscom adds one other piece of advice.. The recent Egyptian Goddess case substantially strengthened Design Patents. Previously, he would only advise a client to get a Design Patent, if it wasn't possible to get a Utility Patent. But after KSR v. Teleflex, this is no longer the case. "Design Patents are much less expensive, have a much higher rate of success, (particularly after KSR and Bilski), and are examined much more quickly than Utility Patent Applications, (an average of 8 months, as opposed to a year or two for most Utility Patent Applications). Thus, until KSR is overturned, we are suggesting that clients who previously did not consider Design Patents, to seriously consider them." You will need to talk to him to find out if a Design Patent will work for you. But this will be good news for some Inventors, on how they can take advantage of this recent development.

So there is hope, and some ways you can deal with this troublesome situation. Although there are many Do-it-Yourself Patent Books, we have always recommended working with a Patent Professional to make sure you get the best protection possible and to maximize the chances of getting a patent. Now more than ever you will want the best advice available to make sure you get a patent.

To contact Eric Hanscom, write him at eric@iciplaw.com

# # #

-- -- Patentlessons - Mini Lesson

-- Inventors: You are forewarned, that if you fall off the IASL pathway, the following is what you can find: Gobbledygook & Legalese to the Nth degree.
-- -->"Application for Patent"
-- --> Come to think of it, "Even if Lincoln wasn't shot, he'd still be dead today!" ;-)
-- --> "Find A Grave - Inventors" - your clue to 'boo who?' -->
-- --> Board on Science, Technology, and Economic Policy
-- --> "NASA Technical Support Package Categories"

--- > "The only perfect science is hindsight."

--- > "6 February 2002" --

--- > "The Most Powerful Microscope in the World"

-- --> Entrepreneurs: "It's later than you think." --> Step Lively - Watch Your Step
-- --> "Murphy Laws Website - Technology Laws"
-- --> "Rube Goldberg Gallery"

-- "President Obama Announces Intent to Nominate David Kappos as Patent and Trademark Director" --

-- "Director's Forum: David Kappos' Public Blog" --

-- "Keynote Remarks - of predecessor, James E. Rogan, at the American Bar Association/Intellectual Property Law Section IPL Summer Conference -- Philadelphia, PA on June 27, 2002" --

-- "Strategic Plan 21st Century" --
-- "Strategic Plan Fee Bill" -- Fee Analysis

-- JOHN CALVERT -- Director of the Office of Independent Inventor Programs - which was created in 1999 to provide the small entrepreneurial and independent inventors with a direct channel to the highest level of the Patent and Trademark Office.

By George Marinakis, George@ABQPatent.com

Some patent attorneys and agents charge very low rates to prepare a (sic)provisional, [Provisional Application for Patent], which makes them attractive to the poor man. I don't have the foggiest idea what these attorneys are selling. Low rates means low hours put in. For starters, I can't run a complete US search in less than four hours, and that's really pushing it. A complete national and international search can run me twelve hours over a period of a couple of weeks. Bear in mind a lot of that is going back and forth with the inventor, because it can take me that long to figure out exactly what the invention is. One inventor came to me with "a method for heating and cooling a house." It took me two weeks to figure out that what he really had was a new solar panel. A different group came to me with a improvement over their pending patent. It was an obvious improvement and therefore not patentable, but out of their pile of ideas we were eventually able to find a beautiful new system.

The point is, that except for straightforward mechanical devices (and sometimes even for them), if I write a patent application for exactly what the inventor brings me, without a search and without extensive discussions, you're probably wasting your money. I'll put you in touch with a few inventors, if you want to hear it from them in person.

An aside: are international searches "worth it"? I know a guy whose patent was declared invalid because it was subsequently shown that the Japanese had already made it. Why don't you ask him? I'd put you in touch, but even after a few years he still really really feels the sting.

I start working on a patent application by writing a complete set of claims. Provisionals don't need claims, but even if I am writing a provisional, I write complete claims, and then I just copy them into the specification. - Yes, I do write provisionals, but the provisionals I write take just as much time and are just as complete as my non-provisionals. I can't imagine how to ensure that the invention is completely defined and disclosed, and distinguished from the prior art, without writing claims.

In order to enjoy the benefit of the provisional filing date, you have to file your non-provisional within one year of the provisional---and the non-provisional application can have NO NEW MATTER. -- I once renamed a wire and a battery snap cap as a "remote battery snap cap," and the examiner objected to it as 'new matter.' The rule is that tight. That means your provisional better be complete. If you want to add new matter, you have to file the non-provisional within a year anyway, because after one year, your provisional will now be prior art, and as prior art it will render your non-provisional as no longer new and as [cosequently] obvious.

And here's a possible scenario: you invent a widget. You file a provisional on May 1. You show it to Company on May 15. You improve the device and file a new provisional or non-provisional with the new matter on June 1. But Company already figured out the improvement and filed their patent application on May 31, one day before you. -- Because you added new matter you can't invoke the file date of the first provisional. You lose. Next time don't file and market prematurely.

This is not legal advice. No attorney-client relationship is created.

Copyright 2008 George Marinakis