The Patent Office and Congress has responded to the patent user community. Many people were complaining that the examination process took too long. It currently takes about 2 to 3 years before your patent application is examined by the Patent Office. In years past, the Patent Office has given preferential treatment in special circumstances such as when the inventor is over 65 years old or if the invention is directed to an area of technology that the government might have a higher interest in (e.g., green tech pilot program). Other programs were created to expedite examination such as the Accelerated Examination program. In response, Congress through the recently enacted America Invents Act has authorized Prioritized Examination. Put simply, the patent application pays a fee ($4,800 for large entity and half that for a small entity) to obtain either a final rejection or approval within about 12 months after filing of a patent application or a request for continued examination.
Patent Prosecution Highway
On a related note to Prioritized Examination, the USPTO also allows expedited examination when an applicant files a patent application in two or more countries. For domestic clients, this works to expedite examination in foreign countries. For foreign applicants, this works to expedite examination here in the United States. Here is how it works. When an applicant files a patent application in two different countries and the country of first filing allows one of the claims, then the applicant may ask the country of second filing to expedite examination based on the allowed claim in the country of first filing. This is called the patent prosecution highway (PPH). Here is a report on the current state of the PPH.
USPTO Website Gets a Facelift
The United States Patent and Trademark Office has reorganized the look of its website. Personally, I like you. Check it out at uspto.gov.
USPTO Satellite Office
The Patent Office user community (i.e., inventors and businesses) has complained of the length of the time it takes for the Patent Office to examine a patent application after filing. Generally, it takes about 24 to 30 months to obtain a first Office Action on the merits from the filing date of a non-provisional patent application. Part of the reason for the long wait is that the USPTO (United States Patent and Trademark Office) has only one location in Alexandria, Virginia. This makes it difficult to hire and retain qualified personnel since employees must either live or move near to the Patent Office in Virginia. The recent enactment of the America Invents Act authorizes the USPTO to set up satellite patent offices throughout the United States closer to the user community and also to hire and retain qualified personnel.
The first satellite Patent Office will be located in Detroit, Michigan. The USPTO plans on opening at least two more satellite offices in the next three years. You can propose your city by submitting comments to the USPTO.
Propose Rulemaking in Response to AIA
The USPTO has begun implementing various provisions mandated by the recently enacted America Invents Act. As part of the rule making process, the USPTO has published proposed rules in the Federal Register. You may comment on the proposed rules by forwarding any comments to the email address listed in the following links to the Federal Register. The proposed rules relate to:
- Inventor’s oath and declaration
- Third party submission of prior art in a patent application
- Citation of prior art in a patent file
- OED Statute of Limitations
Required Reports under America Invents Act
The America Invents Act expanded prior user rights greatly. Prior user rights is a defense that can be raised by defendants that have chosen to use a product or implement a method secretly instead of seeking patent protection. Here is the Patent Office’s report of the new expanded prior user rights.
You can also find the USPTO’s report on international patent protection from the small business perspective. You can read through pages 1-3 to get a good overview of the report.
America Invents Act Roadshow
The USPTO announced a series of cross-country roadshows to discuss AIA-related proposed rules.
Friday, February 17
Friday, February 24
Monday, February 27
Salt Lake City, UT
Wednesday, February 29
Friday, March 2
Ft. Lauderdale, FL
Monday, March 5
Wednesday, March 7