Reinventing the patent process

Bush Administration officials are putting the finishing touches on a controversial plan to revamp patent processes, including increased fees for the multi-claim applications typical of life sciences inventions, and out-sourcing of prior-patent searches.Fees rose an average of 25 percent in January, but the increase did not take the form feared by opponents of the plan when it was announced last June by the US Patent and Trademark Office (USPTO). As originally proposed, the USPTO fee hike was designed to punish those whose patent applications contained multiple claims. Industry opposition squelched the punitive fees, which would have hit particularly hard in the life sciences. Another fee hike, which is expected to raise the office's annual revenue to $1.5 billion, will find its way into the Bush 2004 budget plan, scheduled for release February 4, but this year's fee proposal does not treat multiple claims as per se abuse of the patent system."Sophisticated inventions take a considerable number of claims. That includes most of what comes out of the life sciences," explained Thomas M. Saunders, a Boston patent attorney with expertise in technology patents, including biotech. Under the original fee proposal, once an application exceeded a certain number of claims, the price for each succeeding claim rose exponentially."We had a lot of comments and criticism from the biotech industry," USPTO deputy director Jon Dudas told The Scientist. "We think it makes sense to ask more money for more claims, but we believe strongly that it should be piece-by-piece." Biotech firms, on the whole, do not abuse the system, he added. The majority of biotech applications contain fewer than 40 claims, and the average number is 20. Higher fees are part of a restructuring of patent processes meant to cure a backlog that now exceeds 400,000 applications. The Bush Administration wants to speed things up by shipping out the drudgery of prior art searches — exhaustive probes of the patent database to make sure a new application does not encroach on an existing patent — to independent companies."The greatest need for outsourcing is probably in the sophisticated fields such as biotechnology, because that's where the biggest backlog is and that's where the search power needs to be brought to bear," said Herbert C. Wamsley, executive director of the Intellectual Property Owners Association.Patent lawyers and patent owners worry about certifying, overseeing and auditing the work of commercial patent searchers operating outside the USPTO.Enlisting skilled scientists to examine life sciences applications is a running challenge for the office, noted Michael Kirk, executive director of the American Intellectual Property Law Association (AIPLA) in Arlington, Virginia. He was with the USPTO when the biotech patent boom began. "We asked industry people, 'If you were going to hire for your company or law firm someone with a PhD or law degree and four years experience in the patent office, what would you expect to pay?' and the answer we got back was a figure in excess of the salary of Secretary of Commerce," Kirk recalled.AIPLA and others are seeking guarantees that search contracts will not just go to the lowest bidders."There are many elements that could lead to poor quality, to abuse of the system, to impropriety, to breaches of confidentiality, to conflicts of interest," said Andy Gibbs, inventor and CEO of PatentCafe.com, a California-based intellectual property portal. "We have a real rat's nest of potential problems."The United Kingdom is preparing to launch a variant of the outsourcing proposal, he noted. Instead of sending search work to commercial firms, the UK Patent Office will be sending some of its overload to government agencies in Denmark and Holland. A pilot program showed the performance of the Danish and Dutch offices was comparable to that of the UK, patent officials in London concluded."That kind of approach is still governmentally-based, so you're not introducing the commercial enterprise," Gibbs said. Problems still abound, however, particularly since patent backlogs are a worldwide issue."What happens to the European Patent Office, should it become an authorized third-party search authority, if 10,000 paid US applications hit and it is already behind on its own searching?" Gibbs speculated.

Reinventing the patent process

Fee hikes and outsourcing considered to shrink application backlog in US and UK.

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