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March 15, 2007

Patent Speed

In a press release celebrating its prosecution con job, the USPTO wants your patent application on virtual methamphetamine. Just like the self-destructive nature of chemical speed on the human body, accelerated examination may feel like a rush towards patent grant, while leaving the patent holder with open-ended liability.

The agency is touting its first "success", Japanese printer maker Brother, for getting the first patent, 7,188,939, under the new accelerated examination process. Brother filed the patent application for a new printer ink gauge in late September 2006, and was granted a patent five-and-a-half months later. The program has attracted 236 applications so far.

Facing mountainous pendancy, the agency whipped up a semi-self-examination process, unleashing it last August to thunderous disdain by savvy patent practitioners. Under accelerated examination, the applicant does a supposedly comprehensive prior art search, cites reasons for allowance, then sits back and prays for blessing by an examiner.

Russ Slifer, chief patent counsel at Micron Technology, acutely observed: "It substantially increases our costs and the risk of the application being invalidated in court." Micron has amassed 10,000 patents in the past decade, and has no interest in the ruse of accelerated examination.

Besides the three to five times extra cost from what it normally takes to have a law firm file a patent application ($5000+), the problem lies in the enhanced risk of inequitable conduct for overlooking prior art that could later be deemed as material. Under normal examination, the applicant has no obligation to search the prior art. Under accelerated examination, the applicant must perform a thorough prior art search.

A court finding of inequitable conduct requires a two-pronged examination: 1) the materiality of the prior art asserted as anticipatory; and 2) intent to deceive. Historically, inequitable conduct has been tough to prove, particularly intent. But with accelerated examination, intent becomes a snap: the applicant was obliged to comprehensively search the prior art. Failure to find relevant prior art becomes a cardinal sin.

Jon Dudas, USPTO director, has acknowledged the problem, and said he would be willing to address the issue in collaboration with Congress. Translation: accelerated-examination-granted patents are wafting in an inequitable-conduct-invalidity wind unless Congress changes the law (fat chance).

A less serious problem is the "leapfrog" effect of accelerated examination - applications awaiting examination may anticipate later-filed, but accelerated-examined, patents. So, an accelerated examination patent may be granted that is later invalidated by an earlier-filed, but later-examined & granted, patent. The patent office does not monitor, nor notify, patent holders that such a situation may have arisen.

The U.S. is the only country in the world to have a "first to invent," rather than "first to file," standard for priority date. This exacerbates the leapfrog problem, because the filing date is not a guaranteed assurance that a later-filed patent wouldn't be anticipatory; the only way to find out is through litigation.

While its examiner corps struggles with workload, the patent agency easily pops out propaganda: news stories of the success of accelerated examination are currently flowering in hundreds of papers nationwide.

Earlier Patent Prospector coverage: November 2, 2006; June 27, 2006.

Posted by Patent Hawk at March 15, 2007 7:22 PM | Prosecution