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The waiting time to obtain a patent from the American patent office (U.S. Patent and Trademark Office, USPTO) is getting longer and longer, especially in the information technology, telecommunications and business methods sectors. On August 25, 2006, the USPTO proposed new rules to accelerate examination and allow patents to be issued in less than twelve (12) months.

THE TWENTY-YEAR TREND: A GROWING BACKLOG

The statistics for the last twenty years show that the gap between the number of patent applications filed and the number of patents issued has been widening steadily (see Fig. 1 below).

FIG. 1
(reproduced with the permission of the IPO)

For example, in 2005 the number of patent applications filed with the USPTO increased by 8%, while the number of patents issued decreased by 11%. This obviously means that the USPTO examiners' workload is increasing consistently, as is the time elapsed between the filing of a patent application and the first official letter from the USPTO. The table below shows the number of months elapsed before the first official letter is sent, depending on the technology centre.

Technology centre	Description of technology	Months before first office action
2810	Static memory and digital logic	20
2890	Semiconductor, Electrical, Optical Systems and Components	20
2870/2880	Liquid crystals, optical elements, optical systems, fiber optics, lasers, electric lamps, registers, optics measuring and radiant energy	20
2820	Semiconductors and electrical circuits	20
3660	Computerized vehicle controls and navigation, radio wave optical and acoustic wave communication	22
2850/2860	Photocopying, recorders, measuring and testing, printing	22
2830/2840	Power generation and distribution, music, electrical components and control circuits	23
3710	Amusement and education devices	26
2680	Radio Telecommunications	26
2180	Computer architecture	29
2670	Computer graphics	31
2110	Computer architecture	31
2650	Dynamic information storage and retrieval	31
2120	Miscellaneous computer applications	33
2630	Digital, optical, and general communications	33
2610	Television	34
2640	Audio, speech processing and wired telephone	36
2160/2170	Graphical user interface, data bases	36
2620	Image analysis	37
2130	Cryptography, security	39
2190	Interprocess Communications and Software Development	40
2140/2150	Computer networks	42
2660	Multiplex communication	47
3620	Electronic Commerce	48

Table 1 - Source: http://www.uspto.gov/ as at October 31, 2006.

WHAT YOU CAN DO

One of the means advocated by the USPTO to reduce pendency comprises revising the rules in order to accelerate examination. The new rules came into force on August 25, 2006. The goal of these rules is to provide a final decision on whether or not an invention is patentable, that is, a notice of allowance or a final rejection, within twelve (12) months. The highlights of the new accelerated examination procedure are as follows:

• A petition must be filed together with a US$130 fee.
• The application must be complete (include the fees, declaration, etc.) and filed electronically with the USPTO.
• The application must contain three (3) or fewer independent claims and twenty (20) or fewer total claims.
• The claims must be directed to a single invention.
• The applicant must agree to participate in an interview with the examiner to discuss the patentability of the invention.
• The applicant must provide the results of a pre-examination search and a detailed explanation of how the proposed claims are patentable over each of the relevant references.

It is important to note that currently pending patent applications may be refiled electronically as a continuation application so as to take advantage of the accelerated examination procedure. It is also important to be aware that all statements concerning the patentability of your invention may be used to construe your patent claims.

THE DECISION IS YOURS

If your invention falls under one of the sectors listed above and you would like to obtain a patent quickly, for example, because the technology in your sector changes quickly, you may want to consider the new accelerated examination procedure. Even though the initial cost is slightly higher because you have to prepare additional documentation, the additional costs will be compensated by the fact that you will obtain your patent anywhere from one to four years faster than under the normal procedure.

Marc Benoît

The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault LLP or any member of the firm on the points of law discussed.

© Ogilvy Renault LLP 2006 - All Rights Reserved

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