Update on Patent Reform The Leahy-Smith America Invents Act (AIA) represents the most dramatic changes to U.S. patent law since the 1950s. The provisions of the AIA take effect over time – some are currently in practice and some do not go into effect until March 16, 2013 and beyond. We are committed to providing useful resources and detailed information about the latest changes to patent law. For specific recommendations for your organization, please consult intellectual property legal counsel. The Senate passed its version of patent reform, S.23 the "America Invents Act," in March by a wide margin of 95-5 and the House is expected to bring its version, H.R.1249 to the House floor in June. The Obama administration recently published a views letter supporting the House bill. Many independent inventors have voiced support for the legislation. A recent petition signed by more than 100 independent inventors who supported the legislation noted that the provisions would simplify the process for acquiring and defending rights and make them more competitive in the global marketplace. Among other critical provisions, the enactment of the bill would ensure that the USPTO can access all of the fees it collects while serving the needs of the inventor community and promote economic growth and job creation.
USPTO Grants First Patent Under New Accelerated Review Option
The Department of Commerce's United States Patent and Trademark Office (USPTO) announced it has issued the first patent under its accelerated examination program that began in August 2006. The patent, for a printer ink gauge, was filed with the USPTO on September 29, 2006, and was awarded to Brother International, Ltd. on March 13, 2007. Average review time for applications in the ink cartridge technology area is 25.4 months. This patent issued in 6 months, a time savings of 18 months for the patent holder.
"Accelerated examination allows any innovator in any technology to get a full patent review and decision within twelve months," noted Jon Dudas, under secretary of Commerce for Intellectual Property. In return for cutting the time to obtain a patent decision by 25-75%, the agency asks the applicant for a better application and process. Inventors who want speedy results can get them, so long as they help improve the process."
>> Read Full Story
USPTO Releases For Public Comment DRAFT Five-Year Roadmap for Continued World Leadership in IP Protection and Policy
On August 24, 2006, the Department of Commerce's United States Patent and Trademark Office (USPTO) released for public comment a draft five-year strategic plan designed to foster American innovation and competitiveness at home and around the globe. The draft plan, for which public comment - including suggestions, questions, and other input - is being solicited, identifies quality and timeliness of the patent and trademark review processes as primary goals for the plan that will guide the agency from 2007 through 2012.
"The U.S. intellectual property system is critical to American innovation and competitiveness," noted Jon Dudas, under secretary of commerce for intellectual property. "In the past year, we have provided online filing for patents and hired more patent examiners... and now is the time to set ambitious goals for the next five years."
Under Secretary Dudas further noted that, "the USPTO will continue to find ways to ensure timely, consistent, and accurate examination of patent and trademark applications. This proposed plan builds on the successes of the past five years by continuing to find new and better ways to hire and retain great people and apply more efficient and effective examination procedures."
The proposals included in this draft strategic plan take a multi-pronged approach to ensuring quality and timeliness in the patent review process.
First, there must be a common understanding between the USPTO and its stakeholders of what defines quality. That definition must recognize the inherent realities of limited time and money, and must then be translated into concrete programs.
Defining an acceptable time frame from filing to final decision also is important.
Additionally, hiring, training and retaining highly skilled patent examiners, abolishing the one-size fits all examination system, focusing examination on the claimed invention, and leveraging state-of-the-art information technology are other important components to ensuring high quality and timely reviews of patent applications.
Included among the draft proposed initiatives designed to ensure effective and efficient review of patent applications are:
hiring at least 1,000 patent examiners annually for the next five years
consideration of establishing regional offices
creating partnerships with universities
offering retention bonuses and new monetary awards to patent examiners for meeting goals
maximizing the potential of state-of-the-art electronic tools.
An effective and efficient application review process is as important to potential brand owners seeking trademarks as it is to innovators seeking patents. The draft proposed plan includes initiatives ensuring high quality examination and establishing and maintaining a consistent three-month timeframe for providing filers an initial decision as to whether a mark meets the requirements for registration, regardless of fluctuations in filings and funding. To reach these goals, the USPTO draft includes proposals to:
enhance the trademark quality review program throughout the trademark examination process, and
maintain a staff of examining attorneys in sufficient numbers to handle fluctuating workloads.
In addition, the USPTO proposes to complete its transition from a paper-based process to a completely electronic process in order to maximize the potential of electronic tools to provide the trademark owners with a world-class registration system.
International IP Protection and Enforcement
The draft proposed plan also calls for new and continuing programs and initiatives designed to ensure that American innovation is as well protected globally as it is in the United States.
The USPTO anticipates expanding the number of IP experts working abroad;
increasing the number of foreign officials being trained in IP policy and enforcement, at sessions both in the U.S. and abroad; and
continuing to participate in the negotiation and implementation of strong IP rights in other nations through new Free Trade Agreements.
Additionally, the USPTO proposes initiatives that continue work toward global harmonization of patent laws, improve the Madrid trademark system, harmonize international treatment of geographical indications, reduce redundancies among IP offices, and increase electronic processing efficiencies in IP offices around the world.
A copy of the USPTO's draft proposed five-year strategic plan can be found at http://www.uspto.gov/web/offices/com/strat2007/ .