process. And trust me, you don’t want to
know the stats on rejections being affirmed or partly affirmed upon appeal to
the BPAI.
The next step after that is an appeal
filed in federal court, and ultimately, if
things still don’t go your way and they
are gracious enough to accept the case,
the next step is the US Supreme Court.
As each appeal along the way accumulates considerable legal expenses, you
only appeal when you’re ready to reach
deep into your pockets to win it. Most
people (i.e., ~138,000 in 2009) stick
with filing one RCE after another.
The second snag is a possible Sword
of Damocles hanging over the examiners’ head promoting a reluctance to find
a patent, whether original or RCE, allowable. In the 2005-2006 timeframe,
enhanced standards for patent quality
review were implemented at the PTO.
For each examiner, a random sample of
allowed applications and finally rejected
applications are evaluated by the Office
of Patent Quality Assurance for errors.
If an allowed claim is un-patentable,
then the prosecution of the application
will be reopened. So much for that hard
fought Notice of Allowance you just received, huh? But, to the examiner, the
rate of such errors contributes to
whether they receive a bonus, or are terminated. Coincident with these changes,
the patent allowance rates dropped to a
low of 37. 7 percent in 2007, though as
noted above, rates have improved a tad.
Given the nature of the work at the PTO
to critique the patentability of claims, it
may be argued that there is a tendency
to maintain a rejection rather than find
the claims patentable, particularly when
the patent applicant seeks moderately
broader coverage rather than issuance of
a narrowly phrased and often commercially irrelevant claim.
There are commercially relevant con-
siderations to these delays that are tough
to balance. Should you file a patent ap-
plication in both the US and any other
jurisdiction (e.g., the European Patent
Office), your patent application disclos-
ing how to make and use the new prod-
uct will be published within 18 months
for all your competitors to read. Though
you can market your product with
“Patent Pending” as a warning to possi-
ble competitors that an enforceable
patent may issue, a bold competitor may
market a “knock off” product based on
a published application while waiting to
see if a patent ever issues and promptly
cease activity if it does. The loophole out
of this situation is to only file in the US
and forego any foreign counterpart,
which then gives the option for the
patent application describing the inven-
tion to remain unpublished and thus “se-
cret” until grant.
www.coatingsworld.com
April 2012
