Forums: Discussions for entrepreneurs and small business.

An appropriate title to this thread. It should be all about the POOP specifically relating to patents, the patent office, the way it operates, and of course the ways it fails us.

To start this off. I haven`t seen too many mentions about an item of importance to many of us. That would be the United States Patent and Trademark Office (USPTO) and the incredibly long delays that have hurt and sometimes ruined small companies efforts to protect their intellectual property.  . For the record, we do have a patent under review and we have been knocked off but it`s not that big of a worry for us. We are more concerned with future products.

The time it takes to process a patent has skyrocketed up to five years in some instances! One example of the implications involves almost all software that becomes essentially obsolete by the time it filters its way through this system. It was supposed to be designed to fend off pirates and unscrupulous types but the incentive to lay off other people`s property is being lost.

For those of you unfamiliar with the process, generally speaking, little can be done to protect yourself from a knockoff until you have been given an official patent number. Your pending status will allow you retroactive restitution and compensation if you can successfully litigate an argument but there are devious and evil companies out there that will blatantly copy (or argue a workaround)  a patent and sell it with full knowledge that their short term gain will net them a profit that should withstand any litigation in the very unlikely event that it should even arise more than half a decade into the future.

As long as these unreasonable review periods remain this high, there will be a serious risk to the security of pending products and in many cases renders the process absolutely worthless to the patent holders. While the USPTO has acknowledged this problem they have also admitted that it will be many years before a streamlined system will be in place and even begin to reduce the number of years a patent remains under review. Some of the most recent efforts to speed things up have the USPTO outsourcing American patents under review to engineers in other countries! I find that prospect quite frightening.

If any of you are in the business of protecting your intellectual property or believe that you will one day need to employ the services of the USPTO, I suggest that you send a letter to your US representative expressing your concern about this problem and ask what is being done to solve this problem which  in the end truly affects us all.

One final note. To those of you with a patent pending. Protect your pending patent as if it were still just an idea on a napkin that you don`t want anyone to see just yet. Limit the exposure of your product to those people directly responsible for the design, manufacturing, marketing, and sales of your product. Get your product selling quickly before a similar product finds its way into the marketplace. This is truly your best defense against knockoffs. Litigation should always be considered a last resort.

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~Eric
JE Design Group, LLC
If all you do is what you`ve done, then all you`ll get is what you`ve got.
www.jedesigngroup.com

Yes Yes Yes

Wow, it takes 5 years now? Back when I got my patents (around 1996) it took a little over a year if I remember correctly - and that seemed like forever.

I visited with my examiners when I was going through the system. (I wrote my own patent apps and did my own drawings but had everything checked over by at least two PAs. I did all of the footwork myself.) They have a lot on their plates. Some of those folders were huge! I could never sit at a desk day after day pouring over paperwork like that.

Hopefully they will make some changes or the US is going to fall behind the rest of the world. How sad.

Nerd,

Yes, it is very sad. And yes, the US is falling behind. The one argument that makes some sense is that the patent office not willing to forsake being thorough with each patent just to justify speed. They must maintain the level of quality and attention that they have always provided.

It`s true that allowing things to slide through without proper attention would weaken the strength of patents and would put patent owners at risk by issuing patents that cannot stand up in court against an argument.

1996 was still at the beginning of the technology boom.  The office is completely flooded with software patents, complex circuitry, biochemical advancements and all forms of micro and machine technology that it cannot keep up. Simply understanding a new system takes advanced engineering comprehension and in some cases, a strong grasp of purely theoretical design. When you consider everything it`s no wonder there is a delay. I just think they need to find a way to adapt and do it quickly.

Does anyone else here have any examples, good or bad? I for one, would love to hear about them.

~Eric

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~Eric
JE Design Group, LLC
If all you do is what you`ve done, then all you`ll get is what you`ve got.
www.jedesigngroup.com

I think the current estimates on patent application pendency is about 18-24 months.  Five years sounds way way way off as an average.  No doubt some rare cases may take that long - not many.  I got an office action back recently a mere 5 months after filing the utility application.  That is a lot less than the 60 months that is being suggested on the list.  What art group is the 60 months based on?  I hear some of the business methods can be toward the longer end.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

Patentandtrademark,

Remember I`m talking from filing date to patent number in-hand- not first action. (Although your numbers are exactly where they should be for a patent first action....must be nice)

I`m not making this stuff up.(See any of the articles below) (I really wish it weren`t so!) The math shows 400,000-500,000 and growing patents divided by roughly 4000 examiners. That`s 125 patents per examiner and as you know, and none of them are qualified to work on every type of filing, so the result is, yes, many patents are in longer lines than others. They just can`t keep up. True, some run through in a blistering 24 months (nothing to be proud of) and pendency is still rising. 

I live in the Chicago area and the way I now see it, they will have conceived, designed,zoned, demolished the existing building and fully constructed one of the tallest buildings in the world, The Trump tower in Chicago, in less time than it takes our simple patent to get past maybe a dozen or so pairs of eyeballs and it makes me twitch just a bit. I`m not liking that at all. (Ok that`s a bit of a stretch, it`s more like 7 years from conception to completion for the tower but I think you get the picture)

 http://www.wired.com/news/technology/0,68186-0.html

http://www.govexec.com/dailyfed/0405/042605cdam1.htm

http://www.bizjournals.com/sanjose/stories/2006/07/03/focus5 .html?from_rss=1

http://www.technologyreview.com/read_article.aspx?id=16789&a mp;a mp;ch=biztech

http://www.patenthawk.com/blog/archives/2005/08/patent_backl og.html

And here are a few earlier articles that forcasted the problem.

http://home.ease.lsoft.com/scripts/wa.exe?A2=ind0209&L=i nventors&P=10418

http://msnbc.msn.com/id/4788834/

http://ipcentral.info/blog/2004/11/patent-backlog.html

http://scientific.thomson.com/free/ipmatters/patof/8197414/i pmatters-uspto.pdf

For what it`s worth, we received our Trademark in less than 3 months. That was nice and obviously that end of the office isn`t suffering the same issues as the patent side.

BTW, if you know any higher-ups at the USPTO, I`d be happy to take them to dinner sometime!  (If only it were that easy!) *Sigh*

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~Eric
JE Design Group, LLC
If all you do is what you`ve done, then all you`ll get is what you`ve got.
www.jedesigngroup.com

I have filed lots of patent applications.  I have never had one take 5 years from filing to notice of allowance.  I have never had one take 4 years from filing to notice of allowance.  I have never had one take 3 years from filing to notice of allowance.  My experience is that 2 years is about right.  That is also what the USPTO reports at every public appearance I`ve ever seen.  Yes, the government does sometimes lie.  Given that the pendency numbers are publicly available and verifiable, I think their estimate is pretty close to accurate.

I have heard of some few applications taking five years.  To represent that the average is anywhere near 5 years is very hard for me to believe.  I do this for a living.  I admit that it is theoretically possible that maybe my clients have just been very very lucky for very many years.  I highly doubt it.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

Mr Lindon ,

I`m not arguing with you. You have been focusing on the 5 year number so  changed my post to specify that "in some cases"  five years is happening and although I never mentioned a five year average, I will admit that should have been more clear and  specific and stated that it is happening is some cases and the time it takes for allowance is growing significantly.

I`m not making little of this issue as it affects me directly. Our product is well past your  sub-2 year average and looking more like double that. It`s unfortunate.  

The patent office did publish the following for FY2005 

21.3 months of AVERAGE pendency prior to first action

29.1 months of AVERAGE TOTAL pendency.

These are the USPTO numbers. You know that to reach an average like that you have to have many taking longer. It turns out that you are very fortunate to have been drawing down the average.  Total AVERAGE patent pendency has not been below 24 months since 2002 and has risen approximately 2 points every year since.

With an USPTO reported AVERAGE total of 29.1 months and growing, it is a reasonable assumption to say that some are taking far longer.

So I`ll put the 5 year number aside as the top end of the spectrum and still say be careful out there! The patent process is a tough and time consuming business that takes a very long time and it appears that it is taking longer and longer....at least until we see otherwise. It can have a definite effect on how you proceed with licensing, manufacturing, and marketing.

Best Regards,

Eric

 

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~Eric
JE Design Group, LLC
If all you do is what you`ve done, then all you`ll get is what you`ve got.
www.jedesigngroup.com

You both have good points.  I had one first office action in about 3 months from filing.  I thought it was a mistake.  I have not kept statistics but it seems to me that most first office actions come in about 12-18 months.  And I have had one that came 3 years after filing.  This was a software patent.  When I called (after about a year) to get status, the person who answered the phone said "Well, we have a three year backlog in this art unit."  The USPTO keeps statistics, which can be seen on their web site. 

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Norton R. Townsley
Patent Attorney/Professional Engineer
The above message is provided for general information purposes only and is not to be construed as legal advice.

I can share my own personal experience.  My IP attorny filed my patent application on November 5th, 2004 and I just recieved my first office action July 27th, 2006.  That`s nearly two years for an application filed under "Art Unit" 3749.  To make matters worse they rejected every single claim with some very bizarre logic.  My attorny is pretty confident that this examiner was stretching so as to reject all claims and feels there is nothing like this out there.  My attorny is tweaking a few of the claims and plans on calling the examiner to explain to him how the product is different than the patents he referenced.  Anyone else have similar experiences?  If so, how did it turn out?

Thanks

Vic