Patent Law

One portion of my prior post on PTO Director Kappos' speech at the IPO annual meeting seems to have created some confusion. In particular, many questioned how Kappos planned to implement a system of "easing the acceleration of valuable cases while creating mechanisms for the worthless cases to be more quickly abandoned without wasting resources."

Aligning with the Obama-Sunstein strategy of soft paternalism, Kappos does not suggest that the PTO should set any hard-line rules for determining value and worthlessness. Rather, Director Kappos is intent on introducing a system that provides applicants with an incentive of abandoning applications prior to the first office action by offering accelerated examination for a still pending application. The following is a quote from the printed version of the Kappos speech:

We are working on new programs to help cut pendency across the board, such as one that would allow an applicant to select an application to advance in the queue in exchange for each application they withdraw before substantive examination.

We hope this will benefit applicants who are abandoning applications without response to first office actions, while saving the office from unnecessarily examining applications that are no longer important to applicants.

I suspect that this approach will work to help applicants abandon their own applications that they see as worthless. Here, applications may be seen as worthless either because they cover worthless technology or because they are unlikely to be patentable. A potential problem with the program is that it creates the opportunity to file straw-man applications that are subsequently abandoned in order to accelerate examination. To avoid this, the rule should also allow applicants to simply pay the equivalent of the application fee in order to accelerate examination. The program would also be much more successful if it offered a refund of the search & examination fees when applicants abandon early.

It is unclear whether the right to an accelerated examination would be transferrable.

Links:

• Read the printed version of Director Kappos speech to the IPO
• Ready my prior discussion of the speech