INSIDE
2	180 Patents Issued
3	Web-Site Patent
4	Rates Set for 2003

 

 

 

Provisional Patents ?

 

In the old days, inventors with a new idea used to mail a copy of their disclosure to themselves, using the postmark on the un-opened letter as proof of their invention date. Later, the patent office had a disclosure program that allowed inventors to mail their disclosures to the patent office for safe-keeping.

 

In 1995 the disclosure program was replaced with a program for filing Provisional Patent Applications. The patent office has since accepted disclosures from inventors as "Provisional" patents that could establish the inventor's filing date.

 

Patent office officials suggested that the inventor could file any document as a provisional application, such as a conference paper, a product spec, or an internal memo describing the new product. The inventor just had to attach a cover letter and a fee ($80) to the disclosure paper. The inventor then had one year to file a regular patent application, but had the benefit of the filing date of the provisional application. Such provisional patents would be especially useful to solo inventors, universities, and small companies with limited budgets.

Provisional Dangers

 

Patent scholars have suggested that the Provisional patents are worse than nothing. In order for the provisional patent to support the claims of the final patent, the provisional patent had to meet the same requirements as the description of a regular patent. The description requirements include being clear enough to enable someone to build and use the invention, and a requirement to disclose the "best mode" or preferred embodiment.

 

Another danger of provisional applications is that the inventor can say the wrong thing. The inventor can use "patent profanity" such as saying that something is "critical" to his invention. The courts might then add the "critical" item to the claims, allowing a competitor to get away even though he infringes the literal claims.

 

Provisional Patent Rejected by Appeals Court

 

Often the disclosures from inventors do not include as much detail as the final patent. The missing details can be critical. For example, in a recent case to the patent appeals court, the provisional patent failed to include an angle and a ratio that were in the final patent. Because these details were missing from the provisional application, the Court rejected the earlier filing date. Since the inventor had sold the invention about a year before filing the regular application, the patent was found to be invalid.

 

It took over seven years for the Provisional patent program to be tested in the courts. The program failed to protect inventors despite assurances by patent-office officials promoting the new program. Since it's beginning in 1994 patent attorneys have been very skeptical about the provisional program, saying that the program was a farce. Seven years and thousands of provisional applications later, the courts have shown how risky relying on the provisional patents can be.

 

Patent Law Firm Closes

The respected patent law firm of Lyon & Lyon recently closed down. The firm had over 80 attorneys in law offices in San Jose, Orange County, LA, NY and DC. The law firm was over 100 years old and was ranked #60 out of 370 law firms, with about 500 patents issuing a year.

Patent Filings Slow

 

Since the 1980's, U.S. patent filings have been growing rapidly. Double-digit increases have been common in recent years. However, for the fiscal year that ended Sept. 2002, the patent office reported an increase in patent filings of only 1.4%.

 

With a backlog of over 400,000 applications, the patent office could use the slower rate of growth to work down its backlog. Applications totaled about 300,000 last year, and 180,000 patents issued.

 

My patent filings continue to increase slightly, up 6% from last year. 

 

180 Patents Issued

 

After 9 years of writing patents as a Patent Agent, over 180 applications that I've written have now issued as patents. Congratulations to all the inventors!

 

You can view the 180 issued patents at my website: http://members.aol.com/stuapatent

PTO Tests Image Processing

The PTO recently announced a prototype program to examine patents using image-processing tools. Examiners and office staff will view patent files on their computers, eliminating the need for the large paper files currently in use. Three examining groups have been selected for this trial, including one in the transistor-circuit field.

 

Patent e-filing has been used for several years now, but the e-filed applications are still printed out by the PTO staff and placed in the paper files for examination. The new image processing tools should allow the PTO to eliminate the paper files. It's kind of like the difference between viewing email online versus printing out all of your email.

 

A paperless patent office has been a long-time goal of several past Patent Commissioners. Perhaps progress is finally being made because of a planned move of the PTO to a new campus of buildings. It has been reported that the new buildings do not have enough space for all the paper files, so a change to a paperless office would come at just the right time.

 

The PTO has been in Arlington, VA, in Crystal City by the National Airport for several decades. A new campus of a half-dozen buildings is under construction in Alexandria VA, a few more metro stops out from the current PTO office. The PTO plans to begin moving to the new campus at the end of 2003. However, a rumor is circulating within the beltway that the new Homeland Security Dept. may bump the PTO from the new campus. 

 

Rates Set for 2003

My hourly rate for 2003 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.