USPTO New Accelerated Review Process

Intron writes "Perhaps you have been lying awake worrying that your software patent on bubble sort might spend too much time being "examined" or "peer reviewed". You will be pleased to know that the US Patent and Trademark Office has launched their accelerated review process. "Applicants' submissions enjoy a presumption of patentability" says the patent office. Applicants are also responsible for disclosing any prior art."

Comments

Is this a joke?

[eck06]

(looks at calendar...) Nope, four more days until April 1st. Damn.

prior art searching

[Grond]

A lot of posters are scoffing at the notion that applicants would do a very good job of finding prior art to submit along with their accelerated application. This is not actually the case, however, and the reason it isn't is why the accelerated patent program hasn't gotten much use yet.

See, imagine that the putative lazy (or evil) attorney doesn't do a very good job of finding prior art and submits an application to patent something otherwise well known in the art. Sure, the PTO may grant the patent on the presumption that the attorney did a thorough search. But if the case gets litigated (which it likely will if the patent is really all that bad), then the other side will easily be able to point out the prior art that the attorney didn't submit. When the patent is invalidated as a result, that attorney is going to get sued into oblivion for malpractice. If the attorney omitted the prior art on purpose in order to get the patent issued, it's even possible that he or she could be censured or disbarred.

That brings us to why the new program isn't getting much use. Because the patent will issue only a few months after filing the application, the attorney only has a very short amount of time to search for and find any relevant prior art the PTO needs in order to determine which claims to allow and which ones not to. Most attorneys don't feel like they can search the many millions of US and overseas patents in that amount of time (to say nothing of the countless other 'printed publications' that may be prior art as well). So the program isn't getting used very much.

<rant>
What would be a good change? Eliminating the presumption of patent validity and making the PTO into a simple time stamping/registration body like the Library of Congress. As it stands now, virtually all patents with any value end up at least being inspected by opposing lawyers if not litigated outright, and a great many of them are found to be worthless or of substantially less worth than they appear at first glance. Eliminating the presumption of validity would get rid of the massive delay and cost of being granted a patent while also pushing the initial burden of proof on to the plaintiff/patentee to show that his or her patent is valid. The loss of this presumption would make a patent less inherently valuable and the number of issued patents would likely actually decrease. Because the cost of initiating patent litigation would go up, the number of suits would go down as well.
</rant>

Re:prior art searching

[blckbllr]

Wow. Simply wow. You are so far from the mark.

The reason why this accelerated program is not being used as much, is because it requires the attorney to make affirmative statements that distinguish the Applicant's invention over the prior art. Under the "non-accelerated" system, an attorney does not HAVE to do a search, and may submit an application with no prior art of record. The onus is then on the Examiner to find relevant art that alone, or in combination, discloses each of the limitations of all of the claims of the Applicant's patent application.

With this accelerated program, the onus is on the Attorney (or Agent) to disclose to the USPTO exactly what the differences are between the Applicant's invention and the currently available prior art. This has severe impacts on litigation purposes, which you somewhat touched on, but its greatest impact will be on litigating equivalency (the Doctrine of Equivalents) and whether the attorney's indication of what is disclosed in the prior art constitutes prosecution history estoppel.

If anything, for examination purposes (not litigation purposes), this is a HUGE benefit for Examiners. It allows them to determine more quickly whether an application is actually disclosing a new invention. As an extreme example, under the current system, if I disclose a 4,000 page reference to the Examiner, I did not have to point out in the reference whether it discloses any or all of the limitations claimed by my application. If the Examiner determines that this 4,000 page reference does not disclose the claimed invention of my application and grants it, then I enjoy a presumption that my patent is valid in view of this reference even if it discloses in some way, shape, or form, my invention. It's then up to the litigators to make the invalidity argument. In contrast, with the accelerated program, if I submit this 4,000 page reference, I'm the one that has to show the Examiner exactly where in the reference the relevant portions to my application are.

As for this presumption that patent applications are presumptively valid, I have no idea where that comes from. PATENTS, not applications, are presumed valid. 35 U.S.C. 282.

Re:This is new?

[theantipop]

32 USC 101:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Yes it does seem the PTO operates under the presumption of patentability because that's they way the law is written. Everyone around here likes to fancy themselves such experts on our patent system, when they really have no idea how any part of the examination process works. If you really want to feel qualified to rail on the PTO, please feel free to read up on the MPEP which details the prosecution of every given patent application. If you manage to sift through to relevant sections, you will also notice it is standard operating procedure for the applicant to provide known art. It is known as an Information Disclosure Sheet and is merely a supplemental tool the examiner must consider during prosecution.

Re:It's dead, Jim

[yodhe]

The patent system in the US was broken back in the nineties when the Clinton administration changed the funding for the Patent Office. Previously the Patent Office was funded out of the budget with application and licensing fees going into General Revenue. In the new "efficient" scheme the office was to be funded directly from the application fees. It would seem obvious to all but the most asinine idiot (ie. those not on Capitol Hill) that this is a recipe for disaster, encouraging the Patent Office to approve any and all applications that come their way and leaving it to the courts to subsequently sort the wheat from the chaff.

(NB. For those who might think this a partisan political attack IANAUSC and regard the US political spectrum as a choice between a bunch of right wing reactionaries and the Republicans.)