By Christina Segro 2L NYLS
David Kappos, the Director of the USPTO, came to NYLS on Friday, March 25 to talk about Peer To Patent (P2P) and the Patent Reform Act, which overwhelmingly passed the U.S. Senate with a 95-5 vote on March 8, 2011. Kappos spoke about how successful P2P’s two pilots have been and how much positive response they have received.
A “gateway to add more value” to the patent system, is how Kappos described P2P. Those of us who have been working on P2P have seen the significance, first hand, of this portal into the patent process. The patent process has long been kept behind a closed door, where communication was mainly between patentee and examiner and outsiders were not given access inside; now, with the implementation of P2P, the public has a view into the examination process and the ability to add value to it. By providing a public entryway into this once mysterious process, commentary and prior art references that probably would not have been available to the examiner, are delivered directly to her.
Kappos also called P2P “pro patentee” because, through the submission of prior art by the public, the patentee is able to develop a stronger patent than with which they had started. P2P could become extremely helpful for independent inventors and small businesses because often times they don’t have the time or the resources to search for prior art themselves; P2P assists them by focusing their claims and avoiding prior inventions, therefore reducing the cost of the patent process.
Kappos then expressed his sincere desire to include P2P in the Patent Reform Act (the “Act”), calling it a “no brainer.” No brainer? It doesn’t require much grey matter to realize the significance P2P would have on the overall improvement in the quality of patents and the efficiency of the patent process, which are the main goals of the Act. By giving the public the ability to submit relevant prior art, examiners receive a leg up on the prior art search and can easily make more informed decisions regarding the future of the application. Patentees can also use the submitted prior art to make their claims more narrowly tailored, if the examiner rejects their patent based on the prior art. P2P gives the community a voice by facilitating comment on the application and the prior art submitted. These comments can help the examiner really understand where the community is coming from and exactly how the prior art affects the application, which is important because the examiner is not always well learned in the application’s specific area.
The patent process has long been held to be pro big business and anti small business and independent inventor. The Act is tailored to help small businesses better afford the cost of the patent process. The Act will increase some costs and decrease others, but it will also include a 3-track payment system, allowing applicants to choose the speed and cost of the examination process.
The new system is comprised of:
• Track I - prioritized examination of an application within 12 months of its filing date, at an additional cost of $4,000
• Track II - current application process
• Track III - an up to 30 month requested delay of a non-continuing application
Kappos stated the Constitution does not mandate either a first to invent or first to file system. Despite some recent criticism, changing the US standard to first to file allows for the USPTO to be on the same page as the rest of the world. Some critics are saying that “first to file” is actually a detriment to small business and independent inventor because of the costs associated with filing, but as mentioned above, the 3-track process will help relieve this perceived hindrance. Also, statistics show, that when an independent inventor or small business files first, they have a higher rate of winning an interference, than if they were second to file, which is a shocking 1-in-3 million chance of succeeding.
Kappos left NYLS voicing a strong commitment to P2P and the Patent Reform Act. He also then acknowledged the backlog of patents at the BPAI (20,000) and announced that a new judge will help to reduce this number. Kappos gave a few hints as to who this mystery judge will be: former partner and professor, clerked for the federal circuit and once IP counsel for a Mid-west corporation. Who will be sitting on the bench of the BPAI?