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How long does patent and trademark prosecution take? (2015 edition)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, which is loaded with data about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2015. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or trademark registration?”

To answer that question, here are a few highlights from the USPTO’s FY2015 report:

Patents:  The USPTO’s efforts to reduce patent application pendency continued to pay off in FY 2015. The average time between filing and first office action was 17.3 months, down from 18.4 months in FY 2014 and a sharp improvement from the 28-month average time to first action that was the norm five years ago.  Average total pendency also decreased, from 27.4 months in FY 2014 to 26.7 months in FY 2015, despite the large number of patent applications that were facing difficult patent-eligibility rejections in the past year.

The pendency rates vary depending on the technology covered by the patent application. For example: Continue reading

USPTO retires SAWS: will it have an effect on the USPTO’s effort to screen out poor quality patents?

The USPTO sealUSPTO’s recent announcement that it is retiring its Sensitive Application Warning System (SAWS) yielded mixed reactions from the patent community. While many noted that the announcement was a win for transparency and accountability in government, others (including some patent applicants) found little comfort after they incurred substantial time and expenses resulting from the USPTO’s delay of patent applications that were assigned to the secret program.

With roots dating to 1994, SAWS first came to light in 2006 after a leaked memo revealed that the USPTO was flagging certain patent applications that could be considered “controversial or noteworthy.” SAWS applications could not be allowed before the Examiner prepared a memo to the USPTO Deputy Commissioners for Patent Operations and Patent Examination Policy.

Some of the criteria for SAWS designation were straightforward:  applications covering perpetual motion machines, anti-gravity devices, and technologies that violate laws of physics were included in the list. Other criteria were more fuzzy: Continue reading

USPTO to open permanent Silicon Valley location in 2014

The USPTO plans to hire at least 60 patent examiners and 20 Patent Trial and Appeals Board (PTAB) judges in 2014 at a new location in San Jose, California. Since 2013, the USPTO has operated a temporary satellite office in Menlo Park, California. This week the USPTO announced plans to make the location permanent in a move to the the San Jose City Hall Building.  

According to USPTO Deputy Director Teresa Stanek Rea: “A permanent office will allow us to attract additional intellectual property professionals who will work closely with regional entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process—creating good jobs and promoting American innovation.”

The USPTO originally planned to open a Silicon Valley office in 2013, but delayed the opening due to budget cuts and sequestration. The USPTO already operates a satellite office in Detroit, and it also plans to open a satellite office in Denver in 2014.





Ninth Circuit upholds good faith defense to claim of malicious prosecution in patent infringement case, relies on patentee’s advice of counsel

In Fisher Tool Co., Inc. v Gillet Outlillage, the US Court of Appeals for the Ninth Circuit affirmed its recognition of the “good faith” safe harbor defense to a malicious prosecution claim brought by a plaintiff who won on the merits in the patent infringement case.

In Fisher Tool, Gillet brought a patent infringement suit against Fisher Tool and others, asserting that Fisher Tool et al. infringed Gillet’s patent for hose claimp pliers.  However, Gillet dropped the suit after a Markman hearing resulted in a narrow construction of the patent’s claims.  After Gillet dropped the patent infringement suit, Fisher Tool sued Gillet for malicious prosecution, Lanham Act 43(a) (false representation) violations, and state law claims based on allegedly false statements that Gillet and its representatives made to third parties about Fisher Tool’s alleged infringement.

However, before filing suit and making the statements to third parties, Gillet consulted counsel to obtain opinions as to whether infringement occurred.  The court noted that two in-house counsel and a third outside counsel all issued written statements of opinion that the accused products infringed the patent.  Nothing that the malicious proseuction claims required a showing of bad faith, the court refused to find Gillet liable for mailicious prosecution.

The case reminds patent holders who are asserting infringement claims that pre-litigation opinions can be very useful to help avoid liability in case the infringement case does not end up in the patent holder’s favor.