Law Office Management
Aug. 2, 2007
DIY Research Speeds Patents
A speedy new patent process is useful for those in a hurry—if they have time to do the research. By Steve Seidenberg
Edited by Jeanette Borzo
The U.S. Patent and Trademark Office (USPTO) calls it a new and improved way to obtain a patent. But many patent attorneys have labeled it a danger to both patent applicants and counsel.
First made available last August, an accelerated patent-examination procedure lets some inventors obtain a patent in less than a year. The first accelerated patent was granted in just six months, from filing to grant. That's quite a change from the 2 years experts say it usually takes to obtain a patent, the 3 to 5 years it takes for a patent involving particularly complex technology, or the 14 years that may be required to examine business patents.
But because an applicant's counsel must research existing inventions to identify all limitations disclosed in prior art in the expedited process, an accelerated patent can cost two to three times more. In ordinary patent applications, USPTO examiners are responsible for researching prior art.
Some patent attorneys worry that even with the most diligent research, there is a chance of overlooking relevant prior art?which if discovered during patent litigation can lead to a charge of inequitable conduct.
"It is the inequitable-conduct argument that people are afraid of," says Bill Galliani, a patent attorney in the Palo Alto office of Cooley Godward Kronish. "It creates a litigation issue that wouldn't have existed in a traditional [patent examination] route."
For patent owners, the risk is significant: If inequitable conduct is found, the entire patent is invalidated. This, in turn, provokes a danger for counsel: malpractice suits for not uncovering all the prior art.
"As an attorney, I don't want to fight charges of inequitable conduct," says Russ Krajec, a solo patent attorney in Berthoud, Colorado. "Even if I win the case, my insurance rates would go up?or I'd become uninsurable."
Still, some attorneys say accelerated patents are more likely to survive court challenges, in part because of the intense scrutiny they get from the USPTO. According to Washington, D.C.based James Arpin, one of the Baker Botts patent attorneys who helped Brother International get the first accelerated-examination patent in March, "There's a real possibility that these patents will be stronger than [ordinary] patents."
Megan Kinneyn
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