Patent Pendency: A Great Reason to
Cherish Your Trade Secrets
By Steve McDaniel, JD PhD
& Jon Hurt, PhD
Technology Litigators
So, rather than protecting your prod- uct and your market share using trade secrets, you opt to patent your
new and exciting additive, coating formulation, paint container, paint sprayer,
etc., in the United States. Let’s say the
U.S. is a huge market for you, you have a
strong presence here and you want to get
ahead of the competition from the get-go
with a strong patent position. As the relevant statute says, a United States patent
grants you “the right to exclude others
from making, using, offering for sale, or
selling” the claimed invention within the
United States, but not other countries/ju-risdictions. You have to repeat the
process and spend gobs more money in
Japan, Europe, etc. to cover those markets. Additionally, a US Patent allows
you to block others (the competition)
from “importing” the claimed invention
into the United States from say, a country
that you did not obtain a patent in (e.g.,
Kiribati, Lesotho, Suriname, Vanuatu,
etc.). What this actually means is that
your hard-won patent is Plaintiff’s Exhibit No. One.
But, and here is the first snag, there is
a lag period (“patent pendency”) between
the time you file a patent application with
the US Patent and Trademark Office, affectionately known as the PTO, and the
time a patent granting you the above
rights is issued, which is graphically depicted in the chart on the next page.
The trend is not your friend here, as
the time for obtaining a final resolution
on a US patent application—either is-
suance into an enforceable patent or
abandonment by the applicant (you)—
has increased from about two years to
nearly three years over the last decade.
Things have gotten so sluggish, that I
have personally experienced waiting
over three years and eight months not to
get a final resolution on a patent appli-
cation, but rather just to receive the first
official action!
the current system assigns 0.25 points.
This gives the examiner motivation to go
straight from a first office action to a
final office action on the merits rather
than issuing multiple non-final office actions, forcing you, the applicant, to
choose between abandoning the application, and filing an RCE or outright giving up on getting a patent, or filing a
notice of appeal to the Board of Patent
Appeals and Interferences (BPAI).
The number or RCEs filed are not
easily found in a search of the PTO’s
published data, though in 2009 almost
one out of three utility patents filed ( 30
percent) were from RCEs (i.e., wash,
rinse, repeat). Interestingly, the average
number of notice of appeals filed in
years through 2006 to 2008 (prior to the
switch to the new quota system) was
4,761, while the average for the years
2009-2011 jumped to 13,742. It seems
that the recent “improvement” in patent
pendency is actually just a transfer of
time to the pendency in the appeals
