AIPLAFICPI COLLOQUIUM

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AIPLA/FICPI COLLOQUIUM
Charles E. Van Horn AIPLA 18 November 2001
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Points To Be Addressed

• Current situation
• Problems caused by backlogs
• Opportunities created by backlogs

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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

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Patents in Force ()

• Years from Grants
• 4 84 (89 Lg., 71 Sm.)
• 8 60 (66 Lg., 43 Sm.)
• 12 40 (44 Lg., 24 Sm.)

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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.

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Problems/Opportunities of Backlogs Depends on
Several Factors

• Field of invention
• Type of invention
• Applicants priorities
• Investors
• Public
• Representatives

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Problems Delay of Patent Grant

• Delayed investment
• Missed opportunities
• Delay in ability to enforce exclusivity
• Disproportionate impact on small entities

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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)

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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.

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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

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Opportunities For Applicants

• Defer cost of examination
• Test market
• Develop invention
• Higher quality search/examination
• Potential benefit of patent term adjustment

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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)

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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)

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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.