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Patent Prosecution is an art. A well executed patent strategy can build portfolios of great value. A haphazard strategy (or lack of strategy) is as likely to hit the jackpot as a lottery ticket. Technology businesses must give the attention and respect to their intellectual property which is commensurate with its value.

Do not be fooled by rumors that angels will sing, conflict will end and nirvana will be achieved through expedited patent examination at the United States Patent and Trademark Office (USPTO).

The USPTO remains an arcane system which has for decades rewarded form over substance and this latest reinvention is no more than double speak which will lead the unwary into the abyss. If properly
funded and staffed, the USPTO has the potential to help bring the U.S. out of the economic downturn by providing prompt validation of innovation, which in turn facilitates business and investment.

However, our present USPTO remains a collection of underpaid and overworked patent Examiners who have a bag of tools which are regularly deployed to obstruct the very innovation that patents should
reward.

Expedited examination

The hyped expedited examination, which is supposed to guarantee an office action (a review) within one year (as opposed to 28-45 months in many cases), is a distraction by which the USPTO offers up an alternative to its normal glacially slow process – for a fee.

The so-called expedited patent process is an ill-conceived band-aid that supposedly addresses complaints about an impotent patent office infrastructure which results in too little too late.

The expedited examination simply burden shifts the process from Examiners who should be doing their job of locating the best prior art and working through proper claims, to the patent
attorney and the applicant. The expedited process requires the patentee (or counsel) to make representations to the USPTO which are more likely than not going to devalue any patents obtained. Additionally, such representations may further expose the applicant and prosecuting attorney to charges of inequitable conduct.

Think global

The above reality begs the question, “How one can get a fast patent examination of an important technological innovation without opening the patent, counsel and applicant up to unfair and unreasonable risks?” Answer: Think global!

We have pioneered a practice of actual fast tracking patent examination through what some may see as an “old-school” strategy. Whenever seeking foreign IP rights (outside the U.S.), the jurisdictions entered have their own institutional biases and assumptions. Through long-term relationships with respected, trusted and battle-tested colleagues (and not the latest blogger el cheapo foreign agent who is spamming all U.S. patent attorneys for business), we have been effective in developing a practice of real fast tracking. We analyze which foreign patent offices are best suited for what technology and whether the foreign patent office is aligned with the USPTO in a substantive fashion which allows the underpaid, over-worked, U.S. patent Examiner
to leverage the work done by the foreign office.

Advantages

This strategy, while not inexpensive, is less costly and less risky than the expedited U.S. examination and, for this practitioner, has yielded substantive and well thought-out examinations in much less than 12 months.

The process has been fine tuned by the recent codification of a patent superhighway between the U.S. and some foreign patent offices. The superhighway allows the USPTO to rely on the foreign examination in making its determinations, thus buttressing the sound logic behind this practice.

This process, if properly executed, provides the purported benefits of a U.S. expedited examination with almost none of the shortcomings. It provides a substantive examination within 12 months, without making the patent applicant and counsel responsible for searching prior art and creating the potential liability of providing the Examiner with the analysis of such prior art, should such analysis be successfully “spun” as being misleading or subjective.

If obtaining an examination and/or a patent within a reasonable period of time is an important part of your business model, exit strategy, or fund raising plans, then taking a trip down the global patent superhighway is an option to consider. This highway is like a racetrack and the best drivers with the best pit crews are more likely to obtain the win – for you.

Copyright © 2009 Orange County Business Journal. Reprinted with permission.