Wealth of Ideas Newsletter, December 2009

UPSTO Director David Kappos first announced a new program in his opening remarks at the Intellectual Property Owners (IPO) annual meeting this past September, then discussed the initiative further last month at the Independent Inventors Conference, held at the USPTO’s headquarters in Arlington, Virginia.

Designed to reduce the backlog of patent applications at the overburdened and underfunded Patent Office, the new “accelerate or abandon” option allows certain patent applicants to, in Kappos’ words, “select an application to advance in the queue in exchange for each application they withdraw before substantive examination.”

“Accelerate or Abandon” Program – Pros and Cons

The benefits of such a program seem clear at first glance. Encouraging inventors to take a critical look at their applications will cut down on “junk patents” (too many of which have been issued in recent years, the PTO’s critics say), reduce the backlog of applications facing overworked patent examiners, and give independent inventors and smaller companies the ability to accelerate their strongest patent applications without extra cost.

So, independent inventors speed up the prosecution of their best patent applications and the PTO both reduces its backlog of applications and improves the quality of the patents that do issue. At first blush, it seems like a win-win proposition. Or is it?

The problem is that inventors may have a very difficult time sacrificing one patent application to accelerate another. The “small entities” which are eligible for this program range from individual “garage” inventors to companies and research universities with 500 or fewer employees. What happens, for example, if one scientist’s application is accelerated at the cost of abandoning his colleague’s application? Clearly, that would be an awkward (and possibly unacceptable) choice for universities – but a choice they may be forced to make if they wish to avail themselves of this program.

Small Businesses Face Difficult Choice

For a concrete example of the dilemmas this program is likely to cause for inventors, consider the plight of Cappy’s Concepts LLC, a two-person industrial design shop recently profiled in the Milwaukee, Wisconsin Journal Sentinel. Dick “Cappy” Capstrum and Mirk Buzdum, the company’s owners, have five pending patent applications between them and at least ten more ideas they can’t use – because filing a patent application is expensive and gets them nowhere fast, and showing their inventions to larger companies virtually guarantees infringement.

To Buzdum, says the Journal Sentinel article, abandoning a patent application to accelerate another is “like burning the furniture to keep warm.”

Besides the difficult choice of abandoning an application that an inventor has spent ample time and money on to prepare and file, inventors may also be hesitant to take the accelerate-or-abandon bait because once a patent application is abandoned, it cannot be resurrected.

To an inventor, whose invention is her brainchild, choosing one patent over another may seem like an unthinkable “Sophie’s Choice.”

Accelerate or abandon? It’s a tough choice to make, especially for smaller companies with limited resources. But for some independent inventors, abandoning a patent application they have prosecuted and filed in good faith may seem to be their only option for obtaining quick patent protection for their inventions.

Green Inventions on the Fast Track

Meanwhile, the good news for environmentally-conscious inventors is that there is another initiative underway to accelerate patent applications for certain inventions without having to throw another invention under the bus, so to speak. The USPTO announced on December 7 that applications for “green technology patents” – meaning “proposed technology focused on the environment, renewable energy and reducing greenhouse gas emissions” – will be automatically expedited.

The pilot program will target the first 3,000 eligible patent applications which have already been filed, and the fast-track program is expected to shave off about a year from the patent-review process – which currently takes about 40 months.