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AIPLAFICPI COLLOQUIUM
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Charles E. Van Horn. AIPLA. 18 November 2001. 2. Points To Be Addressed. Current situation ... Problems caused by backlogs. Opportunities created by backlogs. 3 ... – PowerPoint PPT presentation
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Title: AIPLAFICPI COLLOQUIUM
1
AIPLA/FICPI COLLOQUIUM
Charles E. Van Horn AIPLA 18 November 2001
2
Points To Be Addressed
- Current situation
- Problems caused by backlogs
- Opportunities created by backlogs
3
Recent Statistics USPTO
- Year UPR Filed Patents Staff Pend
- 1990 163,571 89,551 1699 18.3
- 1995 221,304 102,579 2006 19.2
- 2000 293,344 165,504 2905 25.0
4
Patents in Force ()
- Years from Grants
- 4 84 (89 Lg., 71 Sm.)
- 8 60 (66 Lg., 43 Sm.)
- 12 40 (44 Lg., 24 Sm.)
5
Recent Changes Under AIPA
- 18-month publication for most (90) patent
applications filed after November 28, 2000 - Patent term adjustment (EXTENSION)for certain
processing delays in USPTO for applications
filed after May 28, 2000.
6
Problems/Opportunities of Backlogs Depends on
Several Factors
- Field of invention
- Type of invention
- Applicants priorities
- Investors
- Public
- Representatives
7
Problems Delay of Patent Grant
- Delayed investment
- Missed opportunities
- Delay in ability to enforce exclusivity
- Disproportionate impact on small entities
8
Problems Uncertainty
- USPTO role shifted to public to predict whether a
patent will issue and scopeof claims - Continuation application practice(FY 98-00
14.7, 16.7, 18.8)
9
Problems Delays In Creating Prior Art Under
102(e)
- 102(e) published U.S. application and patent
effective as prior art as of U.S. filing date for
BOTH novelty and inventive step.
10
Problems 102(e) Prior Art
- 500,000 U.S. applications pending on November
28, 2000 - 10 of applications filed after November 28
request non-publication
11
Opportunities For Applicants
- Defer cost of examination
- Test market
- Develop invention
- Higher quality search/examination
- Potential benefit of patent term adjustment
12
Opportunities Term Adjustment
- Categories of delay
- Delayed acts of examination
- 3-year pendency rule (FY01 87)
- Interference (FY00 136 declared)
- Secrecy Order
- Successful Appeal (FY00 63)
13
Opportunities Delayed Acts of Examination
- 14 months to first action (75)
- 4 months to act on reply (98)
- 4 months to act after Board/Court decision (84)
- 4 months to issue patent after issuefee paid
(92)
14
Problems
- Patent term adjustment shall be reduced for
failure to engage in reasonable efforts to
conclude prosecution e.g., failure to respond
to an Office action within 3 months.
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