One way any size company can grow
and increase assets is by developing or procuring new patents. Today, most patents are improvements
on existing technologies.
Like trademarks, copyrights and trade
secrets, patents are intellectual property
(IP) that need to be protected. They do
not give you the right to do something.
Patents give you the right to prevent others from doing something. Obtaining and
protecting patents can be quite time-consuming, but properly maintained and
defended patents can be very valuable.
“You need to have a strategy when
embarking on obtaining patents,” says
Mitch Weinstein, a partner who leads the
Intellectual Property Service Group at
Levenfeld Pearlstein LLC. “You need to
know your market and what you are trying to protect. You also have to be
patient.”
Smart Business talked with Weinstein
for more insight on domestic and foreign
patents.
What do you mean by ‘determine a strategy’ before starting the patent process?
You need to know what you are trying
to achieve before you start the process.
Are you looking to protect a niche market, a whole new market or, for example,
a replacement parts market? You have to
see what is already out there.
What is the current ‘state of the art’?
What are the key points that differentiate what you have? What are the base
patents? Where is the market now and
where is it going? What are competitors
doing?
You need to determine if you have the
funds and the time to go through the
process and what the potential payback
is.
How long does it take to obtain a patent?
It depends on a number of factors. Do
you need more than a U.S. patent? If so,
where do you need it most and first? Is
the item mechanical or an emerging
technology?
Some patents can be on file for four or
five years before they are even examined. Others can take much less time
than that. Pendency is increasing rather
than decreasing, especially in faster
emerging areas.
Why would some patents take longer than
others?
It mostly depends on the area of technology. Mechanical applications take
less time to move through the examination process. Cutting-edge technologies
take longer. The number of qualified
examiners and the number of applications being filed are determining factors.
With more high-technology applications being filed and fewer qualified
examiners to review the applications,
these applications are going to have a
longer pendency.
Is anything being done to speed up the
process?
Yes, the U.S. Patent Office is trying to
tighten rules to decrease the pendency.
A number of patent rules changes are
pending that may be stalled with current
changes in the Congress. For example, the Patent Office proposes to put the
onus on patent applicants to do a more
rigorous pre-filing search and to report
the search results in a more detailed
report. Other proposed rules changes
cut down the size of the application or
the number of patent claims in the application. One program that could prove
very helpful to inventors wanting to
obtain patents in multiple countries is a
pilot program called the Patent Prosecution Highway (PPH).
What is the Patent Prosecution Highway?
The three largest patent offices are the
U.S. Patent and Trademark Office
(USPTO), the Europe Patent Office
(EPO) and Japanese Patent Office
(JPO). It typically takes more time to get
patents through the EPO and JPO than it
does through the U.S.
The PPH is a pilot program between
the USPTO and the JPO. It will permit
each office to benefit from work previously done by the other office by using
the other patent office’s search as the
basis for the search in that Office. This
should reduce the examination workload, reduce pendency and improve
patent quality.
Besides the exchange of information,
as soon as an applicant receives a ruling from one office that at least one
claim in an application is patentable he
or she can request that the other office
fast-track the examination of corresponding claims in corresponding
applications.
If the PPH works as designed, once
one country determines the legitimacy
of an application, the application in the
other offices can move up the queue
ahead of other applications. If it works
as planned and is then is expanded to
Europe, it should be beneficial to all.
Reduction in overall costs should thus
be realized.
MITCH WEINSTEIN is partner and leader of the Intellectual
Property Service Group at Levenfeld Pearlstein LLC. Reach him at
(312) 476-7593 or [email protected].
