Thursday, August 2, 2012

New Patent Office Rocket Docket Shaves Years Off Patent Wait Times

 Startups looking to deter copy-cat competition, attract angel or VC funding, lure licensees, or boost their share valuations now have access to a new fast track program designed to take them from patent pending to patent-hood status in 12 months or less. Early results of the program, which was created with enactment of the America Invents Act, are nothing short of stunning.
More than 95% (827 out of 855) of those who jumped on the fast track program in September 2011 already have their patents, with the vast majority of these zipping through the patent office in less than six months. Given that typical wait times are on the order of three or more years (and frequently even longer for popular technical fields, such as computer software, telecom, or business-methods), I'm teaching my clients to think of this "prioritized examination" program as the rocket docket.
Here's the fine print you need to know. The rocket docket is only available for 10,000 applications per fiscal year (October 1 to September 30) and requires payment of an extra fee ($2400 for small businesses) on top of regular filing fees to the patent office. This fee is over and above the investment that a startup makes in expert design and construction of the patent application, and well worth it if you'd rather chase a competitor out of your backyard with a loaded gun than a water pistol, or show an angel investor your six-pack instead of a diet plan.    

For already pending patent applications, the rocket docket can be leveraged by refiling a copy of an existing patent application with the required fees, leaving your original application exactly where it is in line. (In patent parlance, the refiled application is called a continuation.)  Depending on the condition of the application, it may be necessary to reduce the number of claims to comply with rocket-docket requirements. (The claim portion of a patent document, whether it be an issued patent or a pending application, defines the boundaries of the invention.)

Even if your claim count is compliant, you should look at tuning them up based on your latest strategic pivots or competitive intelligence. For example, if the original claims were designed to cover a tooth brush with silicon bristles, and a competitor came out with a tooth brush that used textured silicon loops or you pivoted your technology to use loops instead bristles, the claims could be "lawyer-neered" to say tooth brushes with silicon tooth-rubbing members, thereby ensuring that any resulting patent is in sync with your evolving business.
What you should do now is huddle up with your business attorney and patent counsel to talk about where you're at in your business and whether having a patent in your pocket would help move the needle in the right direction. I say now because 3272 of this year's 10,000 available spots have already been taken (as of June 18). This is surprisingly low, given that more than 40,000 U.S. patent applications are filed every month. However, as word spreads and entrepreneurs learn about this tool, the window of opportunity could slam shut without much notice.

Although the 10,000-count will reset to zero on October 1st (the start of a new fiscal year), more folks will know about the rocket docket option then, meaning not only that there could be a stampede to take advantage of this fantastically valuable program, but also that many entrepreneurs could be left kicking themselves for not having acted sooner.

A Post by Eduardo Drake, Guest Blogger 

No comments :

Post a Comment