We recently discussed options for speeding up grant of a European patent. As we mentioned, reasons to expedite grant include the existence of a potential infringer, or the need to obtain grant to enable licensing or sale.
Today, we’ll take a look at what options are available in the U.S.
Accelerated Examination Program
At first glance, this sounds like a great option. You may pay a small fee (or no fee if your invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism) and prosecution will generally be completed within 12 months.
There are, however, some very significant restrictions. The quid pro quo for quick prosecution is that you get to do most of the work that would otherwise be done by the examiner. That means:
- Showing how each feature of every claim is supported in the specification.
- Performing a search on each and very claim. This doesn’t mean just presenting a few documents, either. You have to submit full details of your search statements.
- Explaining how each claim is allowable over the documents uncovered by the search.
Quite aside from the effort (and cost, given most applicants will use a patent attorney), there are significant concerns among many applicants that being required to be your own searcher and examiner represents a conflict of interest. You’re basically being asked to characterize your invention’s relationship with the prior art – something that is generally avoided by applicants as far as possible to avoid potential estoppel issues (“estoppel” in this context is the legal principle under which asserting something at one stage prevents you from arguing the opposite later. “File wrapper estoppel” means that if you say something on the written record during patent prosecution before the EPO, you will be prevented from asserting anything contradictory later, including during litigation, for example).
In a previous post discussing the effects of the America Invents Act on the sole inventor and small company, I mentioned its provision to recognize a new micro entity applicant status. As described by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos, “The new micro entity provision in the America Invents Acts makes our patent system more accessible for smaller innovators by entitling them to a 75% discount on patent fees. By paying discounted patent fees as micro entities, smaller innovators can access the patent system to move their ideas into the marketplace and accelerate U.S. economic growth.”
On May 30, 2012, the USPTO released their proposed guidelines governing micro entity status in the Federal Register. Interested parties now have a 60-day period to provide their comments to these rules. Comments regarding the proposed changes can be sent by e-mail to firstname.lastname@example.org; by regular mail to: Mail Stop Comments — Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of James Engel, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy; or via the Federal eRulemaking Portal.
Did you know inovia has many resources to educate and assist the small volume applicant? We broadcast a monthly webinar entitled “International Patenting Strategies 101” which provides an overview on foreign filing and gives tips on how to maximize your global protection while reducing costs.
I also head up the inovia Small Business Solutions Team dedicated to the needs of the single inventor or small corporation. If you have questions about the patent process or want to find out ways to reduce your PCT filing and European validation costs, feel free to contact me at email@example.com or call me directly at 646-237-3863.
Hi everyone! Before you take off on your Labor Day weekend, have a look at the foreign filing/patenting news for the last week of August:
- More on the America Invents Act: Can any patent applicant qualify as “small entity“?
- Australia Reforms Its Patents Act 1990 – Patent Docs writes of the implications expected from the Raising the Bar Act, which was signed this past April.
- A report released by the Association of University Technology Managers shows just how lucrative licensing agreements can be for university inventions.
- Cambodian economic leaders plan to enhance IP laws over the next few years with the support of WIPO.
- The USPTO will hold two public informational events next week highlighting the AIA’s rules set to take effect on September 16th.
We love hearing your feedback and welcome any comments you have on the above topics. Have a great weekend and if you haven’t already, please follow us on Twitter @inoviaIP!