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« Conference & CLE Calendar | Main | Federal Circuit Sets Schedule for AMP v. USPTO »

April 29, 2012

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Applicants, even sophisticated ones, are themselves often incapable of identifying which patent applications will be important for their businesses. That's why large companies that file many apps will cap the amount they spend on prep & pros - effectively spreading the risk and cost of ultimately unimportant applications across an entire portfolio - but will spare no expense to enforce and/or defend certain issued and known-to-be-valuable patents (much to the chagrin and confusion of many prep & pros practitioners, who don't understand why moving into litigation is more lucrative). Now the *USPTO* is going to identify the important apps? As admitted in the notice, the USPTO can't even get its act together enough to publish apps at 18 months.

What's the USPTO going to do, hire the best Wall Street analysts and former Fed board members to sift through apps and identify the economically important ones? I guess now that the Director has fee setting authority, he can raise fees through the roof to pay for these experts.

There's already an efficient means to prevent information from becoming public before a patent issues: for applicants who think their applications may be important, and are willing to settle for US filings only, a non-publication request is an option. Case in point: non-publication was one of the things of which The Medicines Company availed itself in order to try to protect Angiomax before TMC successfully lobbied for adoption of "The Dog Ate My Homework Act" as part of the AIA last year. Otherwise, most applicants opt for filings in the PCT and other jurisdictions where 18-month publication actually occurs at 18 months.

And how economically intelligent will it be when the USPTO says "no foreign filing certificate" b/c an invention is deemed to be too economically important, thus preventing the applicant from filing elsewhere and rendering its own US-based sales and other disclosures prior art against itself but fodder for foreign entities who want to reverse engineer a product? Better yet, will such applicants be precluded from making and selling their products at all? I think that's called cutting off your nose to spite your face.

Sounds like a dumb suggestion to me...even by Congressional standards.

I have mixed emotions on this.

On the one hand, perhaps someone in government is wising up to the notion that naked disclosure on its own may not be such a good thing for American interests.

On the other, adding a cloak of bureaucracy (to determine "which" items merit economic security status), is problematic, given that the true economic worth of inventions are not likely to be able to be known a priori.

The far simpler thing to do is to simply repeal the forced early publication and return to the actual Quid Pro Quo that ruled the patent system decade after decade (submarine patents have largely been successfully dealt with with the Term provision changes). This would also accord with the Prior User Rights which have gained increased status due to the AIA and for which, no publication is actually required until far downstream of the patent process (since PUR only comes into play as a defense to a patent infringement suit).

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