4.1 Intellectual Property Basics - Updates

Update:7/3/12 USPTO to Open Four Satellite Offices

The United States Patent and Trademark Office (USPTO) announced plans to open new satellite offices in San Jose, Denver, Dallas, and Detroit. The new office locations are part the agency's efforts to expand and modernize under the Leahy-Smith America Invents Act of 2011. The move is intended to help the USPTO attract talent, reduce its backlog of unexamined patents, and speed up the overall process. The Detroit office is scheduled to open on July 13, 2012 (no other dates have been announced.) More information is available in a press release from the agency.

Update:9/28/11 Prioritized Patent Examination Could Benefit Start-Ups

Under the new Leahy-Smith Act, individuals and companies may apply for a prioritized examination of their patent applications effective 9/26/11. 

The goal this process is to provide a final disposition within an average of twelve months from the time prioritized status is granted.  A maximum of 10,000 requests will be granted per fiscal year, with large entities paying $4,800 for prioritized examination and small entities paying $2,400. 

According to some observers, prioritized examination could be a benefit to small medical device companies, particularly as they seek funding.  The ability of start-ups to more rapidly protect their intellectual property is likely to be viewed positively by prospective investors.  For more information, please read the full article.

Update:9/16/11 Patent Reform Bill Signed Into Law

On September 16, President Obama signed the patent reform bill known as the Leahy-Smith America Invents Act into law, enacting the first major overhaul to the U.S. patent system in almost 60 years.

Three main changes are at the heart of the reform bill: (1) transitioning the U.S. from a “first to invent” to a “first to file” system for assigning patent rights; (2) giving the patent office a mechanism to tap into the revenue it generates to address the under-funding problem that has resulted in an enormous patent application backlog; and (3) creating a post-grant review process intended to reduce the number of time consuming, expensive patent disputes that go to court.

Importantly, many of the provisions in the new law related to patent litigation take effect immediately (and some are retroactive). For an overview of the legislation, check out this Client Alert [pdf] from law firm Morrison & Foerster.

Update:9/9/11 Patent Reform Bill Poised to Become Law

On September 8, the Senate voted to adopt the House version of the patent reform bill known as the Leahy-Smith America Invents Act. President Obama is expected to sign the bill into law within the next 1-2 weeks.

Three main changes are at the heart of the reform bill: (1) transitioning the U.S. from a “first to invent” to a “first to file” system for assigning patent rights; (2) giving the patent office a mechanism to tap into the revenue it generates to address the under-funding problem that has resulted in an enormous patent application backlog; and (3) creating a post-grant review process intended to reduce the number of time consuming, expensive patent disputes that go to court. When it passes, the law will mark the first major overhaul to the U.S. patent system in almost 60 years.

Update:4/5/11 USPTO Begins Accepting “Track One” Patent Applications

In February 2011, the United States Patent and Trademark Office (USPTO) announced details regarding its new “Three Track” patent program.  For an additional $4,000 fee, Track One applications receive prioritized examination, including a first Office Action on patentability in four months and final disposition in 12 months of the filing date.  Track Two refers to regular examination.  Track Three allows requests for up to 30 months’ delay  before an application is added to the docket for examination.

According to Gary Locke, U.S. Commerce Secretary, “This new system will bring the most valuable patents, as determined by inventors, to market faster and will help shrink the backlog by catering to the business needs of America’s innovators.”  The USPTO will begin accepting Track One applications effective May 4, 2011.  To ensure it can meet the 12-month goal, the office intends to limit the number of Track One applications to 10,000 in the program’s first year.  The USPTO intends to implement Track Three by the end of September 2011.

Update:3/8/11 Senate Passes Bill to Overhaul U.S. Patent System

In an effort to reduce the backlog of pending patent applications and improve the overall competitiveness of the U.S. patent system relative to other countries, the Senate passed a bill to reform key policies at the U.S. Patent and Trademark Office (USPTO).  Most notably, under the measure, the U.S. would transition from a “first to invent” to a “first to file” system for assigning patent rights.  This move, which is intended to reduce patent litigation costs, would bring the U.S. into alignment with most other major patent systems around the world.  However, as the Wall Street Journal points out, it could negatively affect innovators and small companies who lack the funds and expertise to rush their patent applications to USPTO. The bill will be considered by the House in the coming weeks.

Update:1/19/10

Difference of Opinion Regarding Provisional Patent Applications

In chapter 4.1 (page 220), we provide the following recommendations regarding the creation of a provisional patent application:
“Many medtech inventors choose to write their own provisional patents.  This is a reasonable approach, provided that the application is thorough and sufficiently detailed to communicate the basic invention and support the claims of a later utility patent.  However, it bears repeating that it is wise to have a patent attorney review the application prior to filing, if at all possible. There is no required format for the provisional application.  The application should, however, include descriptions of (1) the need or problem that the invention addresses; (2) shortcomings of current solutions; (3) motivation for the new invention; (4) description of the invention (in enough detail that someone skilled in the field would know how to make it); and (5) advantages of this solution to the problem, including why it is strategically valuable.”

After reading this section, Vadim Gordin, a patent agent, law student, and biomedical engineering major, contacted us by email with the following concerns and suggestions:
“I submit to you the items 1, 2, 3, and 5 are not just superfluous to an application, but dangerous if included by an unsophisticated draftsman. Improper characterizations of the invention, its purpose, or the prior art by an inventor will, in almost all cases, foreclose breadth of patent rights later on in the future. When patent agents or attorneys include such language in applications, it is with very careful and specific wordings designed not to foreclose such rights. If you look to the USPTO provisional application guidelines, you will see that ALL that is required for the content of a provisional application is (1) a written description of the invention; and (2) drawings. Office actions (and not the application) are the proper place to convince the PTO of an invention’s novelty, non-obviousness, and utility (only when those questions arise). A patent application should include ONLY a detailed description of the invention, how it is made, and how it is used.”

In response to this feedback, we consulted with Jim Shay, a prominent patent attorney and partner with Shay Glenn LLP.  Jim, who contributed to the development of this chapter, replied:
“Your student correspondent has a point, but I think the way we stated it in the book is completely correct. While there is some risk that by following our process the provisional will say unfortunate and limiting things, there also would be some risk that following his sparser approach the inventor would omit good information that would be helpful in pinning down an effective filing date for the invention. In the balance, I still recommend the approach we published.”

This dialog highlights the complex and exacting nature of preparing any patent application. Readers are advised to exercise appropriate caution in such matters and to seek the assistance of a qualified patent attorney before making a submission to the USPTO. Vadim added, “Most solo patent practitioners and some small firms will review applications that inventors have drafted for a fee that is a tiny fraction of the cost of drafting an application from scratch,” which can save innovators money while helping them avoid these common pitfalls. Our thanks go to both Vadim and Jim for sharing their thoughts.

Update:8/15/09

Number of Patents Awaiting Approval Triples in a Decade

According to an August 2009 posting by This e-mail address is being protected from spambots. You need JavaScript enabled to view it and This e-mail address is being protected from spambots. You need JavaScript enabled to view it of the Journal Sentinel Online, there are more than 1.2 million patent applications awaiting approval in the U.S.—nearly triple the number from a decade earlier. Moreover, patent analysis performed by the Journal Sentinel showed that the U.S Patent and Trademark office took an average of 3.5 years for each patent it issued in 2008—more than twice the agency's benchmark of 18 months.  The complete article can be found at http://www.jsonline.com/business/53319162.html.


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