The US Patent Office is in a deal-making mood. Really. Ever since Director Kappos told his examiners last Fall that “patent quality does not equal rejection,” I have heard many stories about how patent applications that appeared to be stuck in the limbo 0f serial rejections are now being allowed. Those of us who talk about such things online are in agreement that we may be operating in an unprecedented favorable environment of patent allowances. The data bear out this anecdotal evidence: patent issuances are up 35% this year over last year.
My sense of what is happening, which has been confirmed by other experienced patent folks to whom I have spoken, the perspective of the Patent Office has changed. The consensus is the U.S. patenting process is much less adversarial today. In recent years, examiners were effectively told by the Patent Office administration that “there needs to be a reason to allow an application.” This has now changed to “there needs to be a reason not to allow an application.” This is a subtle, but critical, difference. In the former viewpoint, the gate for allowance is closed and needs to be opened prior to letting the applicant pass through. In the latter, the gate for allowance is open and needs to be closed in order to deny an application.
This change in perspective has resulted in many cases tied up in the Patent Office with “bogus” rejections being allowed for no apparent reason. Is it possible that SPE’s (i.e., Supervisory Patent Examiners) are reviewing cases and telling their staff to allow cases where the prior art does not suffice as a suitable rejection? I think this is the case in many art units.
For those applicants who have not yet seen an allowance, I believe it is important to force the issue with the examiner of the case. Specifically, you should ask your attorney to request an interview with the examiner to see why the case cannot be placed into allowance. While interviews have always been allowed, under the new Patent Office administration, they are now highly encouraged. Also, examiners are being told to reach out and offer to help. With the increasing focus on both allowance and interviewing, patenting of suitable inventions is more likely than ever.
If you are a pending patent applicant, don’t assume that your attorney will suggest interviewing your application, however. First, whether a patent attorney prefers to interview a case is very much a matter of style. Some attorneys prefer to advocate for their clients on paper and, as such, may not even think of suggesting an interview because this procedure is not even in their “toolbox.” Other attorneys may have done examiner interviews in the “old days,” but given the seemingly “anti-patent” tenor in the Patent Office in recent years, they have given up this formerly common procedure. Lastly, you need to recognize that your attorney may be living in the “silo” of his or her own practice. It is often hard to get a handle on broad changes in the practice battlefield when one is effectively fighting a “skirmish” with a patent examiner with specific patent applications.
So, for those of you with pending patent applications, call up your patent attorney and ask why your case should not be interviewed. Don’t be afraid that you are second guessing your attorney or agent, either. Good patent practitioners will welcome the conversation; those who don’t want to hear from you–well, need I say more?
The perfect case for interviewing came across my desk the other day. The application has only a single prior art rejection that involves a totally different technology and use. While there might have been a “Bilski” problem that could be holding up the examination, the examiner expressly did not make a Section 101 rejection. In short, there is no reason the case should not be allowed. The patent attorney told his client that he needed to present an amendment on paper. I suggested to the patent applicant that he tell his attorney to pick up the phone and discuss with the examiner how to get the case passed to allowance. Not only will this take less time (that is, be cheaper) than a written response, it could result in the resulting patent being broader in scope than it would be otherwise.
While I will take a “kinder and gentler” Patent Office after years of often “Kafkaesque” bureaucracy, it is worth mentioning why the tenor of the office has changed so dramatically in recent months. (Indeed, one of the primary reasons I stopped working as a patent prosecution attorney was that I could no longer stomach the irrationality of the process in the past several years.)
First, the issue is financial. The vast reduction in allowances substantially reduced the dollars from allowance fees and maintenance fees due several years after allowance: no allowances means no recurring revenue from fees. In short, the Patent Office is broke and it is in significant part its own fault, although significant blame can also be placed on fee diversion. A second reason is that in Director Kappos, a former high level IBM patent attorney, we finally have a Commissioner for Patents who is a patent attorney and who knows the value of patents to business. From his perspective, patents are not a bureaucratic function, but an important asset that can make or break an entrepreneur or company.
Some might think that this apparent “rush” to allow patent applications will lead to low quality patents. This may indeed be the case. But, there is no doubt that, in recent years, many good cases did not get allowed because of the view that non-allowance meant that the Patent Office was putting out a “quality” product. Think of it this way: if Toyota limited the number of cars, would that mean that its cars were of higher quality than those made by other companies? Of course, not! We can hope that Patent Examiners will moderate the move to greater rates of patent allowance with a grounding in the heightened standard of patentability set forth by the US Supreme Court in the 2007.
I am sure there will be blow-back in the future over the higher rates of allowance, but, if you are someone with a pending patent application–who cares?! I say CARPE DIEM and take your allowance.
Photo: Flickr/The Pop Box