E-Filing Accelerates Patents

Electronic patent filing has been a stellar success in at least one respect - time to patent issuance. I have noticed a dramatic speed-up in patent examination and allowance. To quantify this improvement, I looked at 20 applications that were e-filed, and 20 applications that were traditionally filed through the mail. I looked at the status 5 months after the last patent in each the group of 20 was filed so that the time frame was similar. This status-check date is 11 months from filing of the earliest patent in the group of 20, but only 5 months from the last filing in the 20.

For the 20 e-filed patents, 8 had been examined within 5 months from filing, compared to only 3 of the 20 traditionally-filed patents. This is a dramatic improvement for a first office action within about 6 months - from 15% to 40%.

At the status-check dates, 6 of the e-filed patents had been allowed, and 3 had already issued. In comparison, none of the traditionally-filed patents had issued and only 2 had been allowed by end of the 5-11 month period from filing. The number of early allowances thus increased from 2 to 6. Even after a much longer period - one year from the last filing - only 5 of the traditionally-filed patents had issued, and 9 had been examined and allowed.

Part of this improvement may be due to the PTO's efforts to improve pendancy of all applications, but I suspect that e-filing is a priority within the PTO.

Patent Examined In Less than 2 Months

One e-filed patent was examined in less than TWO months from the filing date. This is extraordinarily fast. Some patents take 1-2 years before the first office action.

One of my clients has been granted the second and third e-filed patent to issue. One patent issued in 6 months and the other in 8 months from filing.

Patent Office Goal: 80 % E-Filings

The patent office has a goal to have 80% of patents be e-filed. From the serial numbers assigned to e-filed patents, I believe that only about 2,000 patents have been e-filed this year, or less than 2% of total patent filings. Law firms have complained that the e-filing software is hard to use and integrate with their existing networks and software. Electronic trademark filings have been more popular, and soon the patent office may require that all trademarks be filed electronically.

Fortunately, I have been e-filing all patent applications for over a year. Once the MS Word file is approved by the inventor, the text and drawings are copied into another file using a MS Word Assistant that adds special formatting and XML tags. After verification, the file is converted to XML and can be viewed with an Internet Browser. A special compiler then encrypts and compresses the XML file and transmits it to the PTO's electronic mailroom. A serial number is immediately assigned and returned in an electronic receipt.

PTO Prints Out E-Filed Applications !

The PTO's 'electronic mailroom' then prints out the XML file and inserts it into the paper files currently used by the Examiners. Someday the PTO will examine the electronic files, but change is slow with government agencies.

Anthrax Scare Delays Patent Office Mail

Most patent office mail is normally routed through the Brentwood Post Office that was contaminated with anthrax. Some new patent applications that were mailed in have been returned to the senders, and other mail is thought to be stuck at the post office. The PTO is said to receive more mail than any other government agency except the IRS.

The patent office installed new fax servers and suggests that as much correspondence as possible be submitted by fax rather than through the mail.

The patent office is in Arlington, Virginia, spread across several high-rise office buildings along the Potomac River, between the Pentagon and National Airport. The Pentagon crash was very close to the Patent Office, being just one metro stop away.

Already-shaken PTO employees have been voicing security concerns during on-line dialogues with the Patent Commissioner. Over 100 samples have been taken at the PTO but none have shown positive signs of Anthrax.

Electronic patent filings were not affected by the postal problems. No doubt the anthrax scare will accelerate the switch to electronic filings.

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Effective – 160 Patents Allowed

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Early Internet Patent May Be Most-Cited

An early Internet patent I wrote for Resonate may be the most-cited patent since it issued 3 years ago, out of more than 300,000 patents issued in the last 3 years. Over 100 other patents have referenced the Resonate patent as prior art cited by an Examiner or an inventor. Resonate makes load-balancing software for web server farms, among other products. Oftentimes patents that are frequently referenced by others are pioneering patents, the first in a new field.

160 Patents Issued

After 8 years of writing patents as a Patent Agent, over 160 applications that I've written have now issued as patents. More are allowed and should soon issue as patents.

Congratulations to all the inventors!

You can view the 160 issued patents I’ve written at my website:

http://members.aol.com/stuapatent

Note that there is no www in the address. Many articles are posted on my site, including old newsletter articles, links to news articles, and a successful appeal I prosecuted with the decision by the patent appeal board.

Web Site Automatically Values Patents

There is now a web site that uses a computer model to automatically value all U.S. patents. Each patent’s relative value compared to other patents is based on the types and number of claims, the field of technology, and the length of the disclosure.

The model assumes that a fraction of the US GDP results from patents. The fraction of the GDP is then divided among all U.S. patents based on each patent’s relative patent value. The web site is at PatentValuePredictor.com and the cost is $100 per patent.

Average Patent Litigation Cost is Now 1.5 M$

Some court data was reported in the October issue of IP Today magazine. A 2001 survey of patent litigation revealed average costs of 0.8 M$ through discovery and 1.5 M$ through trial for cases of 1 to 25 M$. The costs were double for cases over 25 M$ at risk.

The median time from court filing to trial was 25 months for the Northern District of California.

Rates Set for 2002

My hourly rate for 2002 will be $180 per hour, billed in quarter-hour increments. Fixed-price quotes are available for patent applications to facilitate budgeting and avoid expensive surprises.

Prosecution work such as amendments and other paperwork is billed at the hourly rate. Litigation-support work is normally billed at a higher rate.

Patent searches are billed at a flat $400 for U.S. abstract searches. Patent copy expenses are then added on, typically another $50 to $90.

Stuart T. Auvinen

429 26th Ave.

Santa Cruz, CA 95062

(831) 476-5506

(831) 477-0703 (FAX)

Stua@pacbell.net

StuaPatent@aol.com

http://members.aol.com/stuapatent

The views expressed are solely those of the author and do not represent legal advice.

Stuart Auvinen is a Patent Agent registered with the U.S. Patent Office (Reg. No. 36,435). He is a former IC design engineer who writes patents for high-tech companies.

Stuart T. Auvinen

Patent Agent

429 26th Ave.

Santa Cruz, CA 95062-5319

Address Correction Requested

INSIDE
2	Anthrax Delays PTO Mail
3	160 Patents Issued
4	Rates Set for 2002