Domestic and foreign patents Featured

7:00pm EDT February 28, 2007

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 MWeinstein@lplegal.com.