USPTO unveils fast-track patent plan

Inventors with two or more patent applications pending at the U.S. Patent and Trademark Office can have one of their patents fast-tracked – “jumped to the head of the line,” in the words of USPTO director David Kappos – provided inventors abandon one of their less pressing applications.

Kappos told me about this patent parlay initiative yesterday, moments before his keynote address at the 14^th annual Independent Inventors Conference, which runs through today. His team put the finishing touches on the plan literally minutes before his address.

The move is part of a sweeping and – in some circles – controversial set of reforms he intends to implement to help reduce the backlog of 770,000 pending applications – a backlog that is hamstringing innovation and job creation, Kappos said. (One USPTO staffer says the backlog is closer to 800,000.)

Kappos amplified on the 11^th-hour patent parlay initiative during his keynote.

The program, he said, “is specifically designed to accelerate the patent process for independent inventors. This backlog reduction pilot project will be made available only to small and medium-sized entities and will give you the opportunity to receive special, accelerated status for a new application if you abandon a pending, unexamined application.

“The program allows independent inventors and innovators to advance an application in the queue by swapping out one they are willing to abandon,” he told the audience of some 200 at the USPTO building in Alexandria, Va. “We believe this gives you the option to accelerate protection for your innovation – while also reducing the overall backlog.”

The move is another signal that Kappos, the former vice president and assistant general counsel for intellectual property at IBM, is willing to move aggressively to reshape the world’s busiest patent and trademark office. The USPTO faces a $200 million budget shortfall, a constipated pipeline of patent applications, and intense lobbying from competing interest groups and industries seeking different remedies to improve the patent process system.

Kappos already rescinded a widely criticized rules package that would have limited the number of claims and continuations that the former USPTO regime attempted to implement.

Setting a tone that celebrated and honored independent inventors, Kappos began his remarks Thursday by noting the recent death of Bob Rines, an inventor, composer, Harvard and MIT teacher and giant in the intellectual property community. Rines died Sunday of heart failure. He is survived by his wife, Joanne Hayes-Rines, the former editor and publisher of Inventors Digest.

“We, as an IP community, have recently suffered a major loss,” Kappos said. “Mr. Robert Rines, inventor, composer, teacher, and founder of the Franklin Pierce Law Center, was a great American innovator.”

Inventors Digest will pay tribute to Rines in an upcoming issue. The magazine also will carry an in-depth piece on Kappos.

Here are some other selected highlights from Kappos’ address to independent inventors yesterday:

On fees:

“I’m not going to promise you that fees aren’t going to go up… The USPTO is entirely funded by the fees it collects and with the recession has come a significant decline in revenue. We’ll likely have to increase fees to make up for the shortfall.  But, we’re going to do everything we can to deflect those costs from independent inventors.”

On pendency:

“When an independent inventor spends their hard earned money on filing a patent, that inventor should expect a return on that investment, and they should have it in a reasonable timeframe. Right now … the timeframe is unacceptable. We’re working to improve the pendency for independent inventors in several ways. We launched a “pre-first action interview program,” which allows inventors to discuss their invention with examiners at the very beginning of the patent application process. This allows our examiners an opportunity to better understand the prior art and the inventor to better understand the process right at the beginning. Better understanding at the beginning of the process reduces the total time and cost it takes to approve a patent application.”

On post grant review:

“Nobody likes post-grant challenges – not IBM, not Microsoft, not the garage inventor, not you…. So we’re working with Congress to promote a fair, balanced, timely and cost-effective post-grant process – and to ensure the legislation will not permit serial challenges or harassment by any one party.

Please bear in mind that we already have a post-grant review process – it’s called litigation. It is expensive and it is time-consuming and if your patent is challenged in court, you know what that means for your ability to secure capital and bring your product to market.”

On first to file:

“The independent inventor community will benefit from a first inventor to file system. There is a big misconception regarding first inventor to file and I want to clear it up. The new process isn’t a “first to file” system, it’s the “first inventor to file” system. So there is no risk of someone who learns about your invention being able to beat you to the patent office, because they’re not an inventor.  As you know, any filer has to sign an oath and declaration under penalty of criminal sanctions.

This leaves only the issue of simultaneous, non-collaborative invention…what we call interferences.

“The chances that a patent will be subject to an interference based on a 1^st to invent claim—that’s our current system—is .01%.  In 2007—the most recent year for which we have statistics—the total number of interference cases for all applicants, of all sizes that were decided based on a priority claim was seven. That means we already essentially have a first inventor to file system. Moreover, of those seven cases, only one case involved a small or medium sized entity; your chances of being impacted by this change are one in 441,637. Those are lightning strike level odds, folks!”