New bills to change the US patent system

Quick update on patent reform in the USA from an opinion piece in Business Week: “Let the Patent Office Keep Its Money”  

The writer’s point of view is clearly against any kind of fee diversion from the patent office.  He says the USPTO’s inability to increase staff to match the increase in patent/trademark applications has led to severe delays.  Apparently the Senate doesn’t allow the office to keep all of the fees collected and so:

 “…it now takes nearly three years for patent applications to be evaluated. This means that high-tech companies must make investment decisions without knowing for several years if their intellectual property will be protected. It’s not surprising that this uncertainty is making some of them reluctant to invest in new products and services.”

We have frequently blogged news about calls for reform to the system in the US.  There might not be consensus on exactly which reforms should be implemented, but there plenty of voices agreeing that something needs to be done to improve the current system.

(thanks to Peter Bloch for sending me this link)

BIO opinion on support of the US patent reform

Last week I blogged about the US patent reform bill “First to file, first to invent and patent reform in the US”.  To follow up I wanted to repost some of the opinions from the PatentlyBIOtech blog who blogged a post in favour of the reforms “Patent Reform Bill good for Biotech”  

They argue:

“Patents are often the main assets of small biotech companies, and they rely on this intellectual property to attract investors to fund the lengthy and expensive research and development process… The improvements made by the America Invents Act would benefit the biotechnology industry, and indeed all sectors of the U.S. economy, by enhancing patent quality and the efficiency, objectivity, predictability, and transparency of the patent system.”

Re: the first to invent vs. the first to file system they said:

“One of the most hotly debated provisions of the America Invents Act would change America’s first to invent system to a first inventor to file system.  This system is embedded in international patent practice, with the United States as the only exception.  While some argue that America’s first to invent system is superior, it is inherently fraught with uncertainties, and problems arise when biotechnology companies try to protect their inventions here and abroad. This bill would remove these uncertainties, while providing adequate protections against misappropriation of an invention by someone other than the true inventor”

They outline their opinions on other ways the new bill will affect the system as a whole.  The blog is linked to the Biotechnology Industry Organization (BIO) who: “represent more than 1,100 biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations.”

First to file, first to invent and patent reform in the US

The news that the US is debating a patent reform bill didn’t come as much of a surprise, criticisms of the current system (and in particular its backlogs) are common in the media.

It seems however, that the patent reform act is also set to be the topic of passionate debate.  See the NYTimes article “Senators to Debate Patent Bill”  

“…critics say [the bill] will undermine American strength abroad, plunder the United States economy and exceed the government’s constitutional authority”

Strong words indeed!  The article also says:

“…opponents of the bill maintain that the current system is better structured to “give the little guy an advantage,” said Keith D. Grzelak, former chairman of the intellectual policy subcommittee of the United States branch of the Institute of Electrical and Electronics Engineers.”

Interestingly it seems the “big guys” are not happy either with the bill in its current form.  Washington Post article; “Senate debates patent reform as more voices weigh in” says:  

“The proposal has met with resistance from some of its earliest supporters in the technology industry. The Coalition for Patent Fairness, which includes companies such as Adobe, Apple, Google, Intel and Verizon, has issued a statement saying it opposes the current bill.”

The main change proposed is to move from a “first to invent” to a “first to file” system.  For more info on the differences see the Wikipedia page on the topic. In the meantime, we will have to wait and see what the final details of the reform will be.

Fast-track patents at USPTO

The USPTO has been discussing a variety of possible scenarios that might be introduced to alleviate the patent examination backlog.  At this time, approximately 700,000 applications are in line for processing.  In the high-tech sector there is often a direct connection between the status of a patent and the ability to secure financing.

According to Business Week, “Patent Reform: High Stakes for Small Biz”

Letting patent applicants speed up or delay examinations could help small businesses if fees don’t put the fast-track reviews out of reach.

Although Congress may have to approve some of the changes, the USPTO hopes to be able to implement the fast-track by mid-2011.

For the latest from USPTO on the Patent Prosecution Highway (PPH)

Post written by Peter Bloch, consultant to CAS-IP

Update on Green Patents

In mid-December https://casipblog.wordpress.com/2009/12/14/uspto-speeds-review-of-green-patents/ we reported on a USPTO fast-track program for green patents.

The July issue of Scientific American reports http://www.scientificamerican.com/article.cfm?id=patent-still-pending that:

…the agency (USPTO) has approved only about one third of the requests it has received, disappointing inventors and even the Patent Office itself. The program’s acceptance rate is “less than I would have expected,” says Robert L. Stoll, the agency’s commissioner for patents.

USPTO is considering changes to the rules that would enable more applications to get on the fast-track, but there are other factors.  Perhaps most significant is summarized by Mark Bünger, a research director at Lux Research, a New York–based technology consulting firm, who claims that “there will never be something like a killer app in clean technology”.  

History indicates that innovation is often driven by inventions in unrelated technologies which, when combined, enable breakthroughs to emerge.

Post written by Peter Bloch    , consultant to CAS-IP

WIPO Gold & USPTO on Google; IPR data available to all

A great new resource from WIPO launched earlier this month.  http://www.wipo.int/wipogold/en/ .  Read the WIPO press release here.  At the same time it was noted on IP-Watch that the USPTO have also launched access to a bulk of data in a collaboration with Google.  View the USPTO press release here.

June 2010 was a good month for access to information concerning IP rights!

(thanks to Helen & Maria who both sent me the WIPO link)

USPTO, prior art & IP protection for plants in the US; Day #4 of the NPI meeting

The NPI week continued with a visit to the USPTO.  The building in itself started the day on an impressive note, as did the security system! The USPTO offices were built in 2005 and include five (5) buildings named in honour of important actors of patent history. 

The learning experience started at the Global Intellectual Property Academy with a general overview of the USPTOs history and function. We learned numerous interesting facts on the American history in general and on the subject of patents, i.e. that intellectual property goes back to the American Constitution written by the founding fathers.

We then spent some time with Mary Hale, supervisor in the electronic information centre, who took us through the prior art search systems. This presentation triggered many questions on the issue of the USPTO employees’ access to information and databases. Suggestions were then made by the participants concerning national databases that should be incorporated in the internet tools available to employees. It was obvious that it was crucial to them to avoid having the information on national resources overlooked in the research of prior art.

After lunch Anne Marie Grünberg, Supervisory Patent Examiner, presented “IP protection for plants in the US.” She took us through the three (3) types of protection available in the United Sates for plants: 1) the Plant Patent; 2) the Plant Variety Protection, and; 3) the Utility Patent. She then explained how and why these different protections are used. Anne Marie’s presentation and dynamism also sparked many questions from the NPI group. Questions were centered on the details of; whether it is common to apply for both a patent and PVP? (answer: in her experience, it was more common to apply for a plant utility patent and PVP) what does PVP offer that a utility patent does not? (answer: there are different advantages to these protections, for example, the scope of a utility patent can be broader, while it is less expensive in the long run to have PVP).  There was also discussion around the limitations to all these modes of protection, i.e. the farmers’ and breeders ‘exemption which does not exist under the Patent Act, while it is important in the PVPA. Personally, I was surprised to discover that research exemptions are absent from the US Patent Act, which makes the patent scope even larger in the United States. 

post written by Gabrielle Gagne, National Partner, Canada

Just to add, Hanumanth Rao had the opportunity to raise with the USPTO about the work that ICRISAT & CAS-IP have been working on with the EPO to have CGIAR materials included in their prior art searches.  See the information on the following link for more details of this: http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art.  Minna Moezie, the Attorney-Advisor who led the day’s proceedings invited Hanumanth to contact her directly so they can consider the possibilities. — Kay Chapman

 

USPTO speeds review of green patents

The Register reports that:

“The US Patent and Trademark Office said Monday that it’s launching a test program that will greatly speed the review of “green” technology patents.”

The test program looks like a great idea, but clearly has limitations. USPTO will likely be inundated by fast track requests for applications which are not “green”.  And who will decide which applications get to jump the line?

Read the story at:
http://www.theregister.co.uk/2009/12/07/uspto_green_fast_track_pilot_program/

And my old favorite, NPRs Marketplace, has a discussion with Aaron McGushion, an inventor:

“MCGUSHION: So imagine they (GE) have 500 applications pending right now. I would imagine that they’d want to put all of them in this program in order to get their patents issued very quickly.”

Post written by Peter Bloch, consultant to CAS-IP

Peer-to-patent project. Closed, or just on hold?

http://techpresident.com/blog-entry/peer-patent-closes-shop
and
http://www.informationweek.com/news/government/policy/showArticle.jhtml?
articleID=218401497
There have been varying reports about the peer-to-patent project these past weeks.  See the two lead links for some background.  The CAS-IP blog has also made a number of posts in the past about peer-to-patent.

IP Kat published a post at the weekend which included a quote explaining it was all a big misunderstanding, and it is simply the end of a pilot phase to allow for evaluation. The Peer to Patent site itself  in fact does back this up, stating (albeit rather curtly):

“The USPTO has closed the Peer-to-Patent pilot and is no longer accepting new applications.”

Peer-to-patent is no stranger to differing opinions.  One of the more outspoken write ups questioning the project was in the Internet Patent News Service, PATNEWS. (This is available as email only, visit http://www.patenting-art.com/clients/patnews.htm to subscribe.) PATNEWS summed up by saying:

“there is only one solution to the PTO’s prior art problem: providing examiners with the tools and resources they need to do the job on their own”

Getting the word IN. Defensive publishing in the CGIAR

http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art/

Intellectual property management within the context of public research organisations is as much about ensuring access and it is about protecting rights.  Back in 2005 CAS-IP initiated a partnership between the European Patent Office (EPO) and ICRISAT, with a view to ensuring the publications produced by ICRISAT would be easily accessible to patent examiners, and thus qualify as “prior art” and therefore minimizing likelihood of becoming patented by 3rd parties.

Had this option been available to USPTO then perhaps a situation like the Enola bean case could have been avoided.

This forms part of a wider scheme of ‘defensive publication’ http://www.cas-ip.org/ip-agriculture/ip-primer/defensive-publication/

Hanumanth B. Rao, the IP Manager for ICRISAT said:

“The collaboration was initiated primarily to complement the Board approved policy in making ICRISAT’s IPRs  as prior art… Endorsing the CAS-IP novel approach, the CGIAR Genetic Resource Policy Committee(GRPC) has recommended in its meeting held in Rome on 23-25 April 2007 that Centers should be encouraged to incorporate their publications in databases used by patent examiners.  Accordingly, CIAT, the other CGIAR Center has signed a similar agreement with the EPO in Feb 2009.  ICRISAT would also like to initiate collaborations with Patent and PVP Offices in India based on these experiences.”

For more information about this please visit the lead link http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art/