First expedited patent in U.S. gets approved


Plagued by a backlog of applications, the U.S. Patent and Trademark Office now guarantees speedier reviews for companies willing to do some extra work up front. But the express service, which on Thursday yielded Brother International Corp. a patent on a printer cartridge in less than six months, is being criticized by some patent attorneys who say it could do more harm than good. Critics say the extra upfront research and legal work raises the costs of doing business and potentially exposes patent applicants to greater legal liabilities. If applicants receiving speedy reviews leapfrog inventors using the traditional process, there could be lengthy squabbles that the Patent Office has to sort out. The agency’s accelerated examination program, which started in August and issued its first patent to Brother, guarantees applicants a decision within one year, whereas patent reviews typically last one to six years. From the agency’s standpoint, the expedited reviews are critical in helping to relieve pressure on a work force already burdened by a backlog of more than 700,000 applications. Under the accelerated program, a more detailed application is required upfront so that reviewers can assess relatively quickly whether an invention is patent-worthy. Typically, examiners spend months, and sometimes years, making this assessment, often because companies start out with broad claims and then tailor them to focus on their specific innovation. Patent lawyers at some major companies are skeptical of the new system, which has already attracted 236 applications from businesses and individuals. “It substantially increases our costs and the risk of the application being invalidated in court,” said Russ Slifer, chief patent counsel at Micron Technology Inc., which has received more than 14,000 U.S. patents in the last 10 years but has yet to apply under the new accelerated program. The Boise, Idaho-based company, which makes computer memory chips, is worried because courts have the authority to invalidate patents based on findings of “inequitable conduct.” That happens when applicants and their patent attorneys fail to submit all known relevant information, or “prior art,” used to assess if an invention is patent-worthy. If a Patent Office examiner’s mistakes are revealed in court proceedings, there are no legal consequences, Slifer said, “but if an applicant does that … it appears they lied to the patent office.” If mistakes are made, the stakes are high. A federal jury last month ruled that Microsoft infringed on two MP3 patents from France’s Alcatel-Lucent SA and must pay US$1.52 billion (euro1.15 billion) in damages. The Redmond, Washington-based company plans to appeal. Patent Office Director Jon Dudas is aware of patent attorneys’ liability concerns and said he is willing to address them with Congress. Another concern about the accelerated patent process is the potential for applicants to bypass inventors stuck in the Patent Office’s backlog. This is possible because the United States awards patents on a “first to invent” basis, while most other nations use a “first to file” standard. About 100 such disputes per year already come up and are settled before the Patent Office’s appeals board. James Arpin, a patent attorney and partner at Baker Botts LLP in Washington who worked on the Brother patent, said the new process is not perfect but it is a step in the right direction. Henry Sacco, chief legal officer for the Bridgewater, New Jersey-based subsidiary of Brother’s Japanese parent, said the company expects less than 5 percent of its 1,000 annual applications will go through the accelerated program, which costs three to five times more when all the extra work is factored in. The only added government cost is US$130 (euro99) for an accelerated exam, which is tacked on to the regular fees totaling US$2,400 (euro1,820), although small businesses and individuals pay half that much.