Patent Law Practice Center

Spotting Inventors You Might Want to Avoid

To paraphrase the famous quote of Ralph Waldo Emerson, if you build a better mouse-trap the world will make a beaten path to your door. Inventors and entrepreneurs frequently take this quote all too literally, thinking that if they make a better product theirs will sell and make them rich beyond their wildest dreams.

There are, of course, many different reasons why building a better mouse-trap is only the first of many steps on the road to financial freedom. There is no guarantee of financial success given by any patent office in the world. This is true even if you have a strong patent that covers a great product that enjoys robust consumer demand.

But this won’t stop many inventors from attempting to patent some rather peculiar inventions. Chances are that the more peculiar the invention, the more likely the inventor is going to want the patent attorney or patent agent to work for free, or on some kind of contingency basis. If an inventor like this approaches you, even if they seem normal, do yourself a favor and just say NO!

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Life in the Fast Lane – Use of the Patent Prosecution Highway

Michael Davitz, Partner at Axinn, Veltrop & Harkrider and  Practice Center Contributor, recently sent in this article he wrote with colleague’s Drew Schulte and Jia Li discussing the Patent Prosecution Highway and the value that can be achieved for those practitioners willing to explore the new program.

In July of 2006, the United States Patent and Trademark Office (USPTO) established a trial program with the Japanese Patent Office, where an applicant with an allowed claim in one office could fast track the examination of a corresponding application filed in the other patent office.  This program paved the way for what would become known as the Patent Prosecution Highway (PPH).[1] Today, the PPH includes patent offices in many of the world’s largest economies and is growing.[2] Despite the USPTO’s estimate of a 94% overall allowance rate for PPH applications as compared to 44% for non-PPH cases when the United States is the Office of Second Filing,[3] practitioners have continued to be wary of using the new program, especially when it comes to leveraging entire patent portfolios.[4]

In part, the hesitation to embrace the PPH reflects a legitimate fear of comparatively untested methods when it comes to patent prosecution. Although patent practitioners deal every day with cutting-edge technology, which innovates constantly, they are often reluctant to try new approaches as patent prosecution is fraught with dangerous liability.[5] However, for those practitioners willing to explore this new avenue, the PPH offers potentially great rewards in terms of easier and faster prosecutions which can provide value-added leverage for a client’s patent portfolios. (more…)

Robert Hulse Discusses USPTO’s Patent Processing Initiative

I’m sure many of you are still trying to weed through the detailed call for comments on the USPTO’s Three-Track Patent Processing Initiative that was published in the Federal Register last week.  It will be interesting to see the comments that come in from the Patent Community and how the PTO’s proposal will evolve based on the comments.  I had an opportunity to ask Robert Hulse, partner at Fenwick & West, LLP and Contributor on the Patent Center, some general questions that I had regarding the PTO’s initiative:

Are you in favor of or opposed to Three-Track proposal?  Do you believe it’s an improvement from the one-size-fits-all patent system?

Generally, I think this proposal will be good for patent applicants, but I would caution that it is just a general proposal with no specific rules.  Once the PTO published the proposed rules for implementing the Three-Track system, we will have a better understanding of how beneficial the system will be for applicants and how likely this system is to achieve the PTO’s stated goals of reducing pendency while maintaining quality examination. 

 For example, the rules may impose a high fee or otherwise place onerous requirements on applicants to take advantage of the prioritized track, Track 1.  In this case, most applicants simply wouldn’t take advantage of Track 1, which would reduce the effectiveness of the program.  This is the case with the current accelerated examination procedure, which requires a supporting document (the Accelerated Examination Support Document, or AESD) that places a tremendous burden on the applicant. (more…)