Breaking the Logjam of the Patent Application Backlog

You have a brilliant idea and decide to engage a patent attorney to draft a patent application on it. In a matter of months, you will have an issued patent that you can take to the bank, license to others, or use to stop rival companies from competing with you. Right? Not so fast, says the U.S. Patent and Trademark Office.

On average, a patent application filed today will take 2 1/2 years to be issued as a patent by the U.S. Patent Office ' up from 19 months in 1995.

Companies large and small benefit when they have patents in hand. Startups often showcase their patents to potential investors; many venture capitalists and other investors balk at funding companies that lack intellectual property. The CEO of one startup told me that while his investors may not necessarily know what exactly the patents cover, “they sure can count!” Both quality and quantity can be critical. More established companies want their patents to issue quickly to facilitate licensing (a profit center) and/or to stop infringement by the competition.

In short, delays in the Patent Office can be an impediment to implementing important business strategies. Companies want strong patents and they understandably want them “now.”

The increase in patent pendency over time appears directly correlated to the sheer volume of patent applications received by the Patent Office. Patent filings have grown from 236,679 in 1995 to 376,810 in 2004, for an average annual growth rate of about 6%.

Significantly, the growing backlog of applications waiting to be reviewed has far outstripped the increase in filings, suggesting that the Patent Office has passed a tipping point in its ability to handle more work. In 2004, more than 750,000 patents were waiting to be reviewed, a staggering 15% per year increase from just 300,000 in 1995.

On numerous occasions, the Patent Office has assured the patent bar and the public that pendency would not be adversely affected by the volume of applications filed. The growing backlog, however, has led to a significant increase in average pendency of applications.

By 2002, the average wait had grown to 25 months. In 2003, the Patent Office responded with its 21st Century Strategic Plan initiative, which included several suggestions on how to improve the situation. One suggested approach was to implement market-driven examination options, whereby prior art searching typically performed by the patent examiners would instead be performed by outside contractors. In some circumstances, a new search would not be performed, with the U.S. Patent Office instead relying on search results from a foreign patent office for a corresponding foreign patent application.

Other options for speedy examination put some of the responsibility back on the applicant. In one suggested approach, a “rocket-docket” option would give the patent applicant the opportunity to have his or her application reviewed and issued within 12 months, provided that the applicant files electronically, performs a prior art search, and includes no more than 20 “claims” (the numbered paragraphs at the end of the patent that define the metes and bounds of the patentee's property right). Any further correspondence between the Patent Office and the applicant would have to take place via e-mail or fax, and the Patent Examiner would be required to respond to the applicant within 2 weeks.

Yet other ideas included fee discounts or refunds for patent examination processes that reduce the burden on the PTO ' for example, refunding part of the filing fee if an applicant decides to expressly abandon an application during certain time periods in the examination process.

Since recognizing the problem and offering some solutions (none of which have been fully adopted), the Patent Office has continued to report growth in patent pendency. For a typical application filed today, the applicant can expect to wait an average of 30 months before that application will issue as a patent.

The goal articulated by the Patent Office in its plan is to reduce this backlog and drive overall patent pendency down to 27 months by 2008 and to 18 months within 10 years of the plan. Only time will tell whether the Patent Office will be successful in this regard.

In the meantime, while many of the plan's suggestions have yet to take hold, there are processes in place today that a patent attorney can utilize to move an application along.

The Patent Office's default rule is that new applications are taken up for examination in the order of their effective U.S. filing dates. Not all patent applications must be treated alike, however. Exceptions are made for applications falling within certain categories. For example, one rule aims to stimulate the economy: If the applicant shows that it has the ability to make the product it seeks to patent, but will not do so unless a patent is granted, this is a valid ground on which to request expedited examination.

Another rule aims to permit patentees to protect their rights against infringers. If an infringing device or product is actually on the market, the applicant can use this as another ground to move the application along.

Likewise, inventions generally recognized as benefiting society, such as those relating to environmental quality, energy, DNA research, HIV/AIDS and cancer research, superconductivity, or countering terrorism also qualify for expedited examination.

In addition, the application can be expedited if the applicant is of ill health or advanced age, or if the invention is biotechnology-related and the owner is a small company.

Each of these special situations requires the applicant to file additional papers with the Patent Office justifying the request.

I recently filed a request for expedited examination for a client and was told by the Patent Office that it should shave 6-9 months off the time it takes for the application to get in front of the examiner in the first place. It took the Patent Office 1 month to grant the request, and the application should be in front of the Examiner within 3 months from the request date.

If your application does not qualify for special handling, you cannot get to the top of the heap any sooner; but there are strategies that enable a patent attorney to ensure that the process moves along once the patent application is in the examiner's hands.

I favor conducting interviews with the patent examiner, which can be done in person or over the telephone. Explaining the importance of the invention and how it works to the examiner in “real time” is valuable to avoid misunderstandings, as well as to demonstrate commitment to the process, and to suggest to the examiner that this is no ordinary application. When they understand the importance of the application to the inventor, examiners are more likely to help move the process forward.

While telephone interviews can be effective, it is preferable to visit the examiner in person at the Patent Office in Alexandria, VA. In conducting such interviews, I often bring with me prototypes of the invention (if available) and, if possible, a sample device of any prior art that the examiner has raised. For very important applications, you may even want to make a prototype of the prior art if one is not available on the market, to show the examiner how your invention differs.

Expectations must be managed, however. While the examiners appreciate and often better understand the invention and its importance after an interview, they are often reluctant to commit to a position at the interview itself. The interview should be used as a means to expose the examiner to the invention, build rapport and show your commitment to the invention. It is a mistake to expect that you will walk out of the interview with a final decision from the examiner.

I recently had an in-person interview with an examiner and the engineer/inventor in charge of the product line. Together, we explained the invention and its benefits and how it differed from the prior art. In the end, the examiner appreciated our visit, kept samples of the device for reference, and appeared to be more genuinely interested in light of our explanation. I expect that building this kind of rapport will help with this application and future ones with this examiner.

It can also be important to keep the pressure on. After the interview, the inventor or the attorney should prepare a written response summarizing the interview and addressing the points raised. Deliver it to the examiner within a short period of time. I often prepare the response on my plane ride home so that it can be filed the next day. Call the examiner to tell him or her that the response is on the way. Follow up in a week or two and invite the examiner to call you with any issues or concerns he or she may have.

In one matter I was handling, after having established a connection with the examiner, she called to inform me that she was working on the application and, while updating her prior art search, found what initially appeared to be a close prior art reference. She asked that I take a look at it and call her back to discuss it. That afternoon, I was on the phone, and by the end of the conversation, we concluded that the prior art was not a concern. The benefit of this relationship is that it avoided the unnecessary delay of a written office action and response.

Although it appears many of these suggestions may be more costly and timely in the short run, they will prove worthwhile in the long run by producing a patent much more quickly.

You have a brilliant idea and decide to engage a patent attorney to draft a patent application on it. In a matter of months, you will have an issued patent that you can take to the bank, license to others, or use to stop rival companies from competing with you. Right? Not so fast, says the U.S. Patent and Trademark Office.

On average, a patent application filed today will take 2 1/2 years to be issued as a patent by the U.S. Patent Office ' up from 19 months in 1995.

Companies large and small benefit when they have patents in hand. Startups often showcase their patents to potential investors; many venture capitalists and other investors balk at funding companies that lack intellectual property. The CEO of one startup told me that while his investors may not necessarily know what exactly the patents cover, “they sure can count!” Both quality and quantity can be critical. More established companies want their patents to issue quickly to facilitate licensing (a profit center) and/or to stop infringement by the competition.

In short, delays in the Patent Office can be an impediment to implementing important business strategies. Companies want strong patents and they understandably want them “now.”

The increase in patent pendency over time appears directly correlated to the sheer volume of patent applications received by the Patent Office. Patent filings have grown from 236,679 in 1995 to 376,810 in 2004, for an average annual growth rate of about 6%.

Significantly, the growing backlog of applications waiting to be reviewed has far outstripped the increase in filings, suggesting that the Patent Office has passed a tipping point in its ability to handle more work. In 2004, more than 750,000 patents were waiting to be reviewed, a staggering 15% per year increase from just 300,000 in 1995.

On numerous occasions, the Patent Office has assured the patent bar and the public that pendency would not be adversely affected by the volume of applications filed. The growing backlog, however, has led to a significant increase in average pendency of applications.

By 2002, the average wait had grown to 25 months. In 2003, the Patent Office responded with its 21st Century Strategic Plan initiative, which included several suggestions on how to improve the situation. One suggested approach was to implement market-driven examination options, whereby prior art searching typically performed by the patent examiners would instead be performed by outside contractors. In some circumstances, a new search would not be performed, with the U.S. Patent Office instead relying on search results from a foreign patent office for a corresponding foreign patent application.

Other options for speedy examination put some of the responsibility back on the applicant. In one suggested approach, a “rocket-docket” option would give the patent applicant the opportunity to have his or her application reviewed and issued within 12 months, provided that the applicant files electronically, performs a prior art search, and includes no more than 20 “claims” (the numbered paragraphs at the end of the patent that define the metes and bounds of the patentee's property right). Any further correspondence between the Patent Office and the applicant would have to take place via e-mail or fax, and the Patent Examiner would be required to respond to the applicant within 2 weeks.

Yet other ideas included fee discounts or refunds for patent examination processes that reduce the burden on the PTO ' for example, refunding part of the filing fee if an applicant decides to expressly abandon an application during certain time periods in the examination process.

Since recognizing the problem and offering some solutions (none of which have been fully adopted), the Patent Office has continued to report growth in patent pendency. For a typical application filed today, the applicant can expect to wait an average of 30 months before that application will issue as a patent.

The goal articulated by the Patent Office in its plan is to reduce this backlog and drive overall patent pendency down to 27 months by 2008 and to 18 months within 10 years of the plan. Only time will tell whether the Patent Office will be successful in this regard.

In the meantime, while many of the plan's suggestions have yet to take hold, there are processes in place today that a patent attorney can utilize to move an application along.

The Patent Office's default rule is that new applications are taken up for examination in the order of their effective U.S. filing dates. Not all patent applications must be treated alike, however. Exceptions are made for applications falling within certain categories. For example, one rule aims to stimulate the economy: If the applicant shows that it has the ability to make the product it seeks to patent, but will not do so unless a patent is granted, this is a valid ground on which to request expedited examination.

Another rule aims to permit patentees to protect their rights against infringers. If an infringing device or product is actually on the market, the applicant can use this as another ground to move the application along.

Likewise, inventions generally recognized as benefiting society, such as those relating to environmental quality, energy, DNA research, HIV/AIDS and cancer research, superconductivity, or countering terrorism also qualify for expedited examination.

In addition, the application can be expedited if the applicant is of ill health or advanced age, or if the invention is biotechnology-related and the owner is a small company.

Each of these special situations requires the applicant to file additional papers with the Patent Office justifying the request.

I recently filed a request for expedited examination for a client and was told by the Patent Office that it should shave 6-9 months off the time it takes for the application to get in front of the examiner in the first place. It took the Patent Office 1 month to grant the request, and the application should be in front of the Examiner within 3 months from the request date.

If your application does not qualify for special handling, you cannot get to the top of the heap any sooner; but there are strategies that enable a patent attorney to ensure that the process moves along once the patent application is in the examiner's hands.

I favor conducting interviews with the patent examiner, which can be done in person or over the telephone. Explaining the importance of the invention and how it works to the examiner in “real time” is valuable to avoid misunderstandings, as well as to demonstrate commitment to the process, and to suggest to the examiner that this is no ordinary application. When they understand the importance of the application to the inventor, examiners are more likely to help move the process forward.

While telephone interviews can be effective, it is preferable to visit the examiner in person at the Patent Office in Alexandria, VA. In conducting such interviews, I often bring with me prototypes of the invention (if available) and, if possible, a sample device of any prior art that the examiner has raised. For very important applications, you may even want to make a prototype of the prior art if one is not available on the market, to show the examiner how your invention differs.

Expectations must be managed, however. While the examiners appreciate and often better understand the invention and its importance after an interview, they are often reluctant to commit to a position at the interview itself. The interview should be used as a means to expose the examiner to the invention, build rapport and show your commitment to the invention. It is a mistake to expect that you will walk out of the interview with a final decision from the examiner.

I recently had an in-person interview with an examiner and the engineer/inventor in charge of the product line. Together, we explained the invention and its benefits and how it differed from the prior art. In the end, the examiner appreciated our visit, kept samples of the device for reference, and appeared to be more genuinely interested in light of our explanation. I expect that building this kind of rapport will help with this application and future ones with this examiner.

It can also be important to keep the pressure on. After the interview, the inventor or the attorney should prepare a written response summarizing the interview and addressing the points raised. Deliver it to the examiner within a short period of time. I often prepare the response on my plane ride home so that it can be filed the next day. Call the examiner to tell him or her that the response is on the way. Follow up in a week or two and invite the examiner to call you with any issues or concerns he or she may have.

In one matter I was handling, after having established a connection with the examiner, she called to inform me that she was working on the application and, while updating her prior art search, found what initially appeared to be a close prior art reference. She asked that I take a look at it and call her back to discuss it. That afternoon, I was on the phone, and by the end of the conversation, we concluded that the prior art was not a concern. The benefit of this relationship is that it avoided the unnecessary delay of a written office action and response.

Although it appears many of these suggestions may be more costly and timely in the short run, they will prove worthwhile in the long run by producing a patent much more quickly.