How long does it take to get an utility patent?

Short answer: at least three and a half years.

Long answer: You have an invention that you think is worth patent protection. How long is it before you can get your hands on the piece USPTO issued piece of paper? Here is a rough estimate based on the current backlog at the PTO.

First, you start with the prior art search. It usually takes somewhere between 1 and 2 months. Then comes application drafting – a back and forth between you, the inventor, and the patent attorney or agent. Your input is very valuable in writing the right specification. As far as the claims are concerned, as I will write in more detail in a later post, at this stage, they should be as broad as possible. This application drafting takes between 1 and 3 months, depending on numerous factors, not excluding how well you get along with the patent attorney.

There are several types of applications that can be filed: provisional (you have one year to file a non-provisional application based on said provisional), non-provisional, divisional, continuation-in-part and reissue. If you haven’t filed any applications for your inventions, you can either file a provisional or a non-provisional (I will get into more detail about the differences between these kinds of applications in a later post).

Let’s say you finalize the application as non-provisional and you file it with the USPTO. The long waiting-process starts. You can expect a waiting time between 3 and 5 years before the examiner will issue a First Office Action. This is the current way of doing things. There are some proposed changes (see the Three Track Proposal), but we will see if they ever get implemented.

This First Office Action can usually be one of the following: a Notice of Allowance (you are lucky enough to get the patent on the first shot), a restriction requirement (the examiner thinks you have at least two different inventions that need to be examined in at least two different patent applications) or a rejection. So if you are lucky, you can get your patent in at most three and a half years.

Suppose you get a restriction requirement. You have up to 6 months (provided you are willing to pay extension fees) to respond to such an action. Usually, you divide the invention, pursue one of the resulting  inventions in the current application and file one or more divisional applications for the remaining inventions. After you respond, the examiner can either issue a Notice of Allowance or issue a rejection on the current application.

Suppose you get a rejection (on subject-matter, novelty, obviousness, specification, etc.). Again, you have up to 6 months (provided you are willing to pay extension fees) to respond to such an action. From the time you respond, the examiner can take from 2 months to 6 months to respond. And it can again be a rejection. How long can you play this ping-pong game? Every other action on the merits is final, which means you have to pay an additional fee for continued examination. As long as you have the money, you can play as long as you want. Just take into consideration that a patent’s term is 20 years from the date of filling.

Will Android take weather forecast to the next level?

Today I was talking to a buddy of mine and he mentioned the iPhone accelerometer. You remember – originally intended for system protection, but opened up so many possibilities for the gaming industry and it’s now adopted by every smartphone out there. Well, there might another piece of hardware (and software to go along with it) that can change our lives.

What I’m talking about is a somewhat not so publicized piece of news: Google has implemented support for a barometer sensor since Android 2.3 Gingerbread (API Level 9 for the techies). Until now, weather was broadcast by weather services to millions of mobile clients. But picture this: all those millions of mobile clients will be able to share localized air pressure information. You can practically have an air pressure map accurate down to a couple of meters, that spans over thousands of square miles. And it’s not done with the world’s fastest super-computers, but with small gadgets that were mere dreams ten years ago.

Now that’s crowd-sourcing. I wonder if the “technology” of aggregating weather information from millions of users is patentable…

Search for prior art – Part 1

In a previous post I mentioned the search for prior art as one of the steps that must be taken before an application is filed. I cannot emphasize how important it is to do a thorough search. A shallow search might make the examiner’s job of denying you a patent much easier.

There are two main directions in searching for documented prior art: scientific papers and patents. If you are an experienced researcher, you probably already know how to find relevant information in scientific articles. And if that’s the case, then you should be relieved to find that searching through patents is much easier due to very good indexing on USPTO’s part.

Whenever a patent gets issued, 35 U.S.C. 112 makes sure the invention is clearly described. On PTO’s website you can either try for patents that have been issued (http://patft.uspto.gov/netahtml/PTO/search-adv.htm) or patent pending applications (http://appft.uspto.gov/netahtml/PTO/search-adv.html). As you will surely see, there are a number of parameters at your disposal, the most important ones for prior art search being the abstract, the specification, the claims and the current US classification (not necessarily in this order).

In the next part I will describe various methods that can be used for finding out, through PTO’s search system, if you really are an inventor.

How to interpret the (patent)? law

This is going to be a bit twisted, but bear with me.

This week I read two stories about apparently two different matters: IBM wants to patent the business patent process and Microsoft petitions the USPTO to reverse the refusal of granting the reexamination in i4i case.

1. At the end of December 2010, IBM submitted an application entitled “Intellectual Property Component Business Model for Client Services”. Given the fact that IBM is the leader in obtaining US patents year by year and in 2000 they filed an application for “an apparatus, system, and method for providing reservations for restroom use”, it should be no wonder that  one of their strategic objectives is to have the largest portfolio of US patents. The way things are moving in this domain (more and more patent trollers, and what is worse, more and more powerful trollers – see Intellectual Ventures) it is a pretty good strategy.

But let’s remember what came out last year: the Supreme Court decision on Bilski. A close decision (5-4) that basically said business patents are still alive. So IBM went ahead and filed this application. How did the Supreme Court interpret the law in that case? Well, they said the Federal Circuit’s “machine-or-transformation test” (MOT) should not be the standard and . I remember reading Chief Judge Rader’s dissent when the case was still at the CAFC (which, by the way, was considered by some very straightforward). This is the first phrase of his dissent:

This court labors for page after page, paragraph after paragraph, explanation after explanation to say what could have been said in a single sentence: “Because Bilski claims merely an abstract idea, this court affirms the Board’s rejection.

It’s that simple. Yes, you can reject a business method for being an abstract idea. Of course, in IBM’s case, they tied it to a machine, so it is no longer an abstract idea. There you go: interpreting the law – going back to the roots.

2. At the end of December, Microsoft filed a petition with the USPTO to reverse the refusal of i4i’s patent reexamination. Interesting about this petition (and relating to this post) is the first argument: the “nose of wax” from the Supreme Court decision in White v. Dunbar (an 1886 case!!!). Applied to this particular case, it says that you can not narrowly interpret the claims during application prosecution and broadly interpret them during litigation. There you go: interpreting the law – going back to the roots.

My point is rather simple – if you want to interpret the law, then you must go back and read (actually not just read, but read through) what the legislators meant when they wrote it. Some laws are that good – they can stand the ultimate test: the test of time.

What’s in a patent? Part 5

The next two parts will end the short series analyzing the eligibility of an invention. Bear in mind that these six parts only scratch the surface of what is a very complex patenting system.

Because Section 112 has six paragraphs that deal with the description part of the patent application, I will have two different posts regarding this particular section.

In this post I will write about the first paragraph:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

First paragraph talks about three important facts: the invention has to be described, the best-mode of your invention has to be described and those descriptions have to be clear enough for a PHOSITA to implement your invention. This is all you need to know about the first paragraph, but don’t take it lightly: rejections have been issued based on this paragraph.

What’s in a patent? Part 4

First of all, I would like to announce that I will participate in the postaday2011 challenge issued by WordPress.

Now, with that out of the way, let’s get back to figuring out if your discovery is worth a patent. Last time I analyzed Section 102, which deals with novelty issues. Today I will post about 35 U.S.C. 103 “Conditions for patentability; non-obvious subject matter”. Just as you might think, this section is a bit trickier because it is much more subjective. Let’s see why.

35 U.S.C. 103 mainly says that even if your invention cannot be rejected under Section 102 (that is, your exact discovery has already been described and/or used), it can be rejected if  “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains”. The remaining articles of Section 103 deal with special cases (like biotechnology) and I will not get into discussing them in this post.

Now, when you have a patent application, who determines how different is the prior art from the subject matter sought to be patented? The examiner, who has to impersonate a PHOSITA (person having ordinary skills in the art). Is there a (mathematical) method for rigorously computing this difference or are there models of PHOSITAs? Not that I know of. So it all resumes to an argument battle between the applicant (lawyer) and the examiner.

Of course there have been some cases, on how to interpret Section 103, that reached the US Supreme Court. The latest was KSR v. Teleflex. Basically, on this occasion, SCOTUS  advised examiners and judges to rely on common sense when it comes to interpreting Section 103.

So when you have an invention, do a prior art search (I will teach you in a later post how to do that) and use your common sense to tell if your invention is different enough from what has been already invented.

Next time I will tackle 35 U.S.C. 112.

USPTO Survey

At the end of last year, while documenting on USPTO’s website (http://patft.uspto.gov), a pop-up appeared telling me I was chosen for a customer satisfaction survey. Ever since Director Kappos was appointed in 2009, the Office started a process of improving itself. It looks like right now they got to this part of interacting with the applicants, potential applicants and lawyers.

To give you an insight, these are some of the items in the survey:

• Please rate the ability to load pages without getting error messages on this site.
• Please rate the visual appeal of this site.
• Please rate the readability of the pages on this site.
• How well does this site meet your expectations?
• How likely are you to return to this site?
• How likely are you to recommend this site to someone else?
• I can count on this agency to act in my best interests.
• I consider this agency to be trustworthy.
• This agency can be trusted to do what is right.

Given that, in my opinion, the user experience on USPTO’s website is pretty good, I can only hope that they get to other pressing matters in the patent system as soon as possible.

What’s in a patent? Part 3

Today I will make a short introduction into 35 U.S.C. 102 “Conditions for patentability; novelty and loss of right to patent”.

The main idea behind this Section is not to have your discovery invented by someone else before you. The main criteria for determining this:

• was your invention used or known in the USA, or patented or described anywhere in the world, before you invented it?
• was your invention patented or described anywhere in the world, or in use or on sale in the USA more than one year prior to the date of application in the USA?
• was your invention patented or is about to be patented in a country other than the USA on an application submitted more than one year prior to the date of application in the USA?
• was your invention described either in an application for patent in the USA filed before you invented it, or in a granted patent on an application filed before you invented it?
• can another inventor can prove that he invented it before you?

By doing some prior art research, you can determine the answer to the first 4 questions. The answer to the last question will probably come up during application prosecution (if you get that far).

An interesting fact is that the current Patent Law is based on a first-to-invent. For some years now there have been several Congress bills that tried to change the law into a first-to-file system, which will simplify the application system and harmonize it with US trading partners, reduce costs and improve the competitiveness of American inventors seeking protection globally. Last (failed) attempt was made by Senator Patrick Leahy in 2009.

With this I conclude the very short review of 35 U.S.C. 102. Next time I will review (just as quickly) Section 103 “Conditions for patentability; non-obvious subject matter”.

What’s in a patent? Part 2

In part 1 of the series I posted a list of law requirements that an invention must meet in order to get patent protection in the US. Today I will expand on the requirements set out by Section 101 of 35 U.S.C.

Section 101 of the 35 U.S.C. literally says

“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.”

This definition sets the basic three requirements you need to know about the patentability of your invention: the subject matter, novelty and utility. Out of these, the most important is the patent-eligible subject matter of an invention or discovery. If it doesn’t pass this requirement, then the invention/discovery will not be analyzed any further by the patent examiner and a rejection will be issued. For instance, you can make a checklist:

• Is my discovery a process? or
• Is my discovery a machine? or
• Is my discovery a manufacture? or
• Is my discovery a composition of matter? or
• Is my discovery an improvement of a process, or a machine, or a manufacture or a composition of matter?

If your discovery meets any of the items in the above list, then you can go ahead with checking the detailed patentability requirements set out in 35 U.S.C. Sections 102, 103 and 112.

There are three subject matters that are not eligible (and don’t even try to think about patenting anything in these areas because you will get the swiftest of the rejections): abstract ideas, laws of nature and natural phenomena.

So far so good, right? Well, there is much more than this simple interpretation. Just think about the discoveries made in the not so long ago established domains of computer science (software) and biotechnology. Are discoveries in these domains patent-eligible subject matter? Anti-patents people think not, but if you read the law and don’t interpret it in hindsight, then yes, they are patentable.

There have been many USPTO Guidelines for helping patent examiners correctly interpret 35 U.S.C. Most of these Guidelines have been written after some important decision by the Federal Circuit or the US Supreme Court which sought to shed some light on how to interpret the law in these new domains. The latest as of today is the one after the SCOTUS decision in the Bilski case. At least for now, software and genes are patent-eligible subject matter. It remains to be seen if and for how long things remain the same.

So far, we have established some minimal conditions that need to be met by a discovery for being patentable: novelty (which is described in more detail in Sections 102 and 103), utility (or usefulness) and patent-eligible subject matter. The last conditions to be met (in the US) for a discovery to be patentable is set out in Section 112: Specification.

Next time I will tackle 35 U.S.C. 102.

What’s in a patent? Part 1

For what we call an invention protection, by any other name, would still do the job. So, a patent gives us protection for an invention.

What kind of protection? In the US, the maximum period is 20 years. I say maximum because there are certain events that can minimize the protection period. You can have your patent declared invalid in a court of law or you may not pay your patent maintenance fee in due time.

How do I get a patent? The United States Patent and Trademark Office has to follow Title 35 of the United States Code (35 U.S.C.) when examining, rejecting and/or issuing a patent. There are a couple of rules an inventor has to know in order to decide whether his/her invention has a chance at getting patent protection:

1. Is the invention a patent-eligible subject matter? The answer is in Section 101 of the 35 U.S.C.
2. Is the invention patentable? The answer is in Sections 101, 102, 103 and 112 of the 35 U.S.C.

In most articles and books on patent law you will see that the two terms (patent-eligible and patentable) are used interchangeably. In my opinion, they should not. “Patent-eligible” refers to the subject matter of the invention (which cannot be an abstract idea, a law of nature or a natural phenomenon, but must be a process, machine, manufacture or composition of matter), while “patentable” refers to the standards that need to be met by the invention in order to get patent protection (to be new, useful and clearly described).

Next time I will be back with the description of these four 35 U.S.C. Sections: 101, 102, 103 and 112.

I will end this post like a regular patent attorney (which I am not) and tell you that what you have read here is not legal advice and it is not legally binding.