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“People will explore how you did the search [and ask], ‘Was it reasonable how you did the search?’” Thayer said. “What you disclosed will be under heightened scrutiny.”
Fenwick & West partner Michael Shuster also wonders whether clients would be willing to spend money on additional legal services upfront, especially at a time when companies are worried about the large sums they’re already spending defending their patents in court.
“People are looking to conserve patent budgets,” Shuster said. “So from that point of view, I could see some resistance on the part of clients.”
Shuster’s clients are often biotech companies whose patents are very complex. Oftentimes his clients haven’t clearly worked out what they plan to do with their inventions, either, he said.
“For life sciences, where I practice, it’s a little less useful,” he said. “Particularly for therapeutics, there’s not any marketed products until fairly late in the process.”
However, the fast track may work well for different kinds of technology, Shuster and others said.
“It can be very useful for industries that have short product lifecycles,” he said. “Things like computer security, software-related patents and chip design.”
Robin Silva, a patent attorney with Morgan, Lewis & Bockius, agreed.
“The time from filing your patent to product is generally a lot shorter in those areas,” she said. “There may be business reasons you might want to patent it more quickly.”
In other words, there might be a need to patent a technology quickly to gain or maintain an edge in a fast-evolving field. The accelerated program worked well for the ink cartridge modification because it was a straightforward mechanical application, Thayer added.
The PTO’s Focharino acknowledged that the accelerated program might not be for everyone and may need some revision. The program came from a desire to reduce the time people have to wait for their applications to be addressed, she said.
“A lot of it depends on the applicants � if they feel this product may be infringed on early on,” she said. For example, it may not be a good solution for a drug that takes years to get Food and Drug Administration approval, she added.
Overall, Shuster said, the program is a “positive development,” especially in light of the criticism heaped on the PTO in recent years. “For people who have grown frustrated with delays, it’s just another user fee to obtain a higher level of service.”
A March 19 article about the U.S. Patent and Trademark Office’s accelerated examination program misspelled the name of the PTO’s deputy commissioner for patent operations. Her name is Peggy Focarino.
We regret the error.
