The Invent Blog :: Stephen M. Nipper's Patent Blog

Did you know that the FDA maintains a:

Manufacturer and User Facility Device Experience Database (MAUDE). MAUDE has data on reports of adverse events involving medical devices. The data consists of voluntary, facility, distributor and manufacturer reports. An on-line search facility is available that enables the user to search the CDRH (Center for Device and Radiological Health) database for information on medical devices which may have malfunctioned or caused a death or serious injury.

More information on the Biotech and Medtech - Inventions and Patents blog post:  "Learning from your competitors' mistakes."

The USPTO announced a final rule last week:  Changes to Eliminate the Disclosure Document Program. 

My thoughts...good riddance to a program frequently abused by invention promotion companies...an easy way to trick inventors into thinking they had protection at the U.S. Patent Office. 

I don't know how many times I've consulted with a (former) client of an invention promotion company where the poor inventor proudly pulled a stamped Document Disclosure out of their stack of papers, showing me how the promoter had filed a patent for them.  Don't get me wrong...I never saw proof that the promoter had actually told them it was a patent, but the program was clearly was misleading/confusing to the inventor, a fact the invention promotion companies gladly took advantage of.  I'm sure the closure of this program will send many a promotion company back to the drawing board for how to replace this golden goose.

Ohio patent blogger Matt Buchanan has an interesting post up…providing a list of the “Top Ten patent law topics begging for law review attention.”  Fee diversion, eBay & Congress, continuation abuse…a worthy list if you’re looking for a law review topic.

OR, if you have a topic to suggest…leave a comment to that post.  Maybe then his top “ten” post will have more than “eight.”  ;-)

I recently wrote three posts (1, 2, 3) on Accelerated Examination (AE), including one post that included the opinions of two practitioners on why they didn’t think it was a good idea.

Although I didn’t formally give my opinion, you can sense my apprehension/skepticism.  I can see how AE could be useful, but can’t imagine many cases/situations justify the risk or cost involved.  As such, I found the prospects of the process disappointing…I thought AE would be a cure (magic bullet) for pendency problems.  Alas.

Steve Guttman, the Director of Intellectual Property at Autodesk read my post series (and their “Con” leanings) and sent me an email (posted here with permission) adding some additional insight:

In my opinion, this is a classic example of the “missing-the-forest-for-the-trees” phenomenon that I’ve seen quite a few lawyers fall victim to. Yes, this new procedure will be more expensive and more burdensome than a traditional application. Yes, by characterizing the claims and the prior art, you (arguably) provide a potential litigant with ammunition that can be used in court. And, yes, because you’re obligated to do this prior art searching, you are more exposed to inequitable conduct claims than if you didn’t (although, this seems to be a staple of most patent litigations in any case).

But, not a single person has brought up the business benefit that an issued patent could have for a company compared to a pending application. A pending application has little perceived value; an issued app, substantial. What should drive the decision to use the accelerated procedure are the business risks and benefits—period. I can drive cross-licensing discussions with an issued patent. I can protect key product features. If I’m a startup—an issued patent could help me get funding, or force a competitor to design around/forgo important product elements. The difference between a 1-year pendency and 5-year could be enormous.

As for the risks—I think they have been overstated. An issued patent is assumed to be valid—whether it was granted through accelerated examination or not. I would argue that a litigant is going to have to go to as much work and accrue nearly as much expense to prove such a patent invalid, whether it was granted through accelerated exam or not. You will go to court and spend several million dollars. And, quite honestly, I don’t think it’s any easier to convince an Eastern Texas jury that a patent isn’t valid because your accelerated prior art search wasn’t comprehensive, than it is to use any other argument. (In fact, complex arguments don’t tend to work well in that geography)

Personally, I don’t have any immediate plans to use the accelerated procedure. We have a decent sized portfolio, and have a good pipeline of applications filed and in process. Do I consider this to be an arrow in my quiver—a tool to be used? Absolutely. I would be surprised if there weren’t an occasion where the business benefits of a 1-year pendency would be substantial.

I would encourage your readers to consider their clients best interests instead of the perceived incremental risks. Instead of dismissing the procedure out-of-hand—see if you can understand, and recommend to your clients under what circumstances accelerated exam may make sense.

Via email:  “on December 19th the USPTO will be holding a webcast to announce the release of a new version of PAIR.  To pre-register please click on the link:  https://websurveyor.net/wsb.dll/39376/PAIR12-06AnnEnrollmentForm.htm”

More practitioner thoughts on the Accelerated Examination (in follow up to my earlier post):

• Patent Prospector on "Accelerated Examination Hell." 
  • The bottom line: forget accelerated examination. Accelerated examination is an act of desperation for both the patent office and applicant.
• Russ Krajec on "Why I Will Not Be Filing Under the Accelerated Examination Program of the USPTO." 
  
  • New prosecution options are always welcome.  However, my bet is that there will be a few attempts at this program, but when the first patent is litigated and found invalid, there will be far fewer people even considering the program.  As an inventor, patent holder, and patent practitioner, I want every patent to be as thoroughly and comprehensively searched, evaluated, and run through the proverbial wringer before the patent issues.  I do not want a cheap, quick patent that cannot be enforced against anyone.

I sat through most of* the USPTO Webinar earlier today regarding Accelerated Examination.  These are my notes/summary.

The USPTO is pushing for “final decision” (allowance, final rejection, appeal, RCE) within 12 months.  To accomplish that they will require patent attorneys to provide better information, do more telephone interviews, etc.   All in an effort to speed the process up.

The Applicant (YOU) must:

• file all documents via EFS-Web
• pay additional fees
• file complete applications (no missing parts)
• follow specific procedures (easiest way to understand these proceedures is to look at the form you’ll need to file:  USPTO SB28). 
• I’ll summarize Form 28 here for you:
• File less than 20 claims, 3 or less independents, no multiple dependents.
• Agree not to separately argue patentability of a dependent claim during any appeal
• All claims directed to a single invention
• Agree to phone interviews.
• Agree to not traverse restriction requirements.
• Do a patent search
• File an IDS that, for each reference cited, identifies all of the limitations of the claims that are disclosed by the reference specifying where the limitation is disclosed in the reference.
• Provide a detailed explanation of how the invention is patentable over the prior art.
• Supply a concise statement of the utility.
• Show where every element in the claims is supported by the specification and in any applications you claim priority from.
• Note:  Form indicates that they expect it will take TWELVE hours to complete the form. 
• That number is going to greatly vary depending on the case, the art, and the prior art cited.
• I can’t see how this is going to be a way of saving costs by speeding up the process.  In my opinion it will likely cost considerably more to prosecute such an application.  Time will tell, I suppose.

The program has been “LIVE” since August 25, 2006 and only 51 applications have been filed under it. 

When a case is filed under it, it jumps to the top of the Examiner’s pile (everyone else’s cases get bumped back later).

UPDATE:  A link to the webinar presentation:  websurveyor.com/downloads/services/aewebcast110206.ppt.  A link to the video/audio of the presentation (should be available until March 2007):  webex.client.ninesystems.com/accexam/

*we had an office emergency:  somehow a squirrel got loose in our office.  Oh the benefits of working in an Idaho patent firm.

I haven’t reviewed this topic enough to form an opinion one way or another (as to how it would benefit/harm MY clients)…yet.  However, if you’d like to learn more:

The United States Patent & Trademark Office [USPTO] invites you to participate in a special web announcement on Thursday, November 2nd at 2 p.m. Eastern / 11 a.m. Pacific on the USPTO's revised Accelerated Examination [AE] program.

If you have already enrolled, thank you and we look forward to your attendance on November 2nd.

As of August 25th, 2006, the USPTO has established procedures under which the examination of a patent application may be accelerated, leading to a final decision by the examiner within 12 months from the application filing date.

To learn more about the new Accelerated Examination Program, and the specific requirements to participate in it, please register for this free online event by clicking on the following link:

https://websurveyor.net/wsb.dll/39376/AccExamAnnEnrollmentForm.htm

During this live one-hour web cast event, USPTO personnel will review important components of AE including:

• The benefits to the applicant
• New requirements to make special which apply to all patent applications
• New processing and examination procedures
• Additional information required by the new AE process
• Accelerated response time mandated by the process
• Brief review of how to file under the new program using EFS-Web

The presentation and audio for this event will be streamed to you over the internet. All you will need to participate is a computer with an internet connection, sound card, speakers and the ability to view Windows Media presentations.

Remember, this web announcement will be held Thursday, November 2nd at 2 p.m. Eastern/11 a.m. Pacific and requires registration. Don't miss this important opportunity to learn more about Accelerated Examination from the USPTO personnel.

Click here to assure your enrollment in this free web event.

https://websurveyor.net/wsb.dll/39376/AccExamAnnEnrollmentForm.htm

United States Patent & Trademark Office
Search and Information Resources
600 Dulany St.
Alexandria, VA

Krajec says he’s not going to recommend his clients doing AE.  Crouch (read the comments too) weighs in as well.

The Queen of the Blawgers Denise Howell has a new gig…working with Leo Laporte & his This Week in Tech netcast to produce a weekly netcast (podcast) called This Week in Law where Denise and a panel discusses hot topics in technology law. 

This is hoooooge!  Listen to it!  Subscribe!