Leading up to the passage and following the enactment of the America Invents Act (AIA), many small- and medium-sized companies questioned whether some of the reforms to the U.S. intellectual property system in the act would negatively impact their ability to compete against larger innovative companies. Several of the questions posed Monday reflected those concerns. Kappos noted several aspects of AIA and of the USPTO practice that might in fact be helpful to the smaller businesses:
- The additional resources appropriated in the AIA have allowed the USPTO to hire more examiners and patent adjudicators, and they are on target to achieve their goal of reducing the patent application backlog to 325,000 by 2015. This would be an ideal level, (down from the 535,000 applications this year) allowing on average for a 10-month initial response time to applications and a 20-month completion period.
- The additional resources also has allowed for the opening of the first patent field office in over 230 years in Detroit. Three more offices are due to open in Dallas, Denver and the Silicon Valley. The hope and expectation is that these field offices will provide greater access to inventors to seek counsel directly from the USPTO; and it will allow the USPTO to hire experts in the fields most relevant to the local offices (i.e automotive engineers in Detroit or software engineers in Silicon Valley, etc.). Again, the hope is that this will make the USPTO more responsive and efficient in its work.
- He also noted the 75-percent discount available for micro enterprises on the patent filing fee.
- In response to a question regarding the challenges of small businesses to compete against larger enterprises with respect to business workflow patents and software applications, Kappos shared that the USPTO, in the wake of recent judicial decisions relating to business method patents, is taking a much more rigorous approach to software. While some software applications contain significant intellectual property advancements, many are just basic code applied for a business purpose. In those instances, the director is advising examiners to not issue marginal patent awards.
- Finally, in relation to concerns about the new “first to file” stance of the USPTO, Kappos noted that there are new related provisions that help to mitigate trolling of patents and protect smaller actors from losing patentability in such a process. In particular he highlighted the expanded grace periods, which allow for inventors to declare notice, but continue pursuing financing before the art is revealed in the patent application.
Finally,Kappos shared with the audience several initiatives that the USPTO is undertaking to introduce young people to the innovative process and that will inspire them to pursue STEM disciplines and ultimately be IP owners. He highlighted the Inside the Outdoors program that the USPTO is undertaking with the Orange County Department of Education to develop curricula focused on biometric innovation. He also spotlighted a partnership with the 20 Million Minds Foundation, a non-profit organization working to leverage leading-edge technologies to present compelling interactive academic tools to attract young people to learn more about intellectual property and patents.
The evening was a tremendous success and beginning to the California TechVoice chapter. Chair of the Chapter Dan Shapero invited participants to reach out to him and get involved locally around issues and policy developments that impact small- and medium-sized tech firms. CompTIA and its partner in the event, the Technology Leadership PAC, were grateful to its host Powerwave Technologies. We look forward to many more such networking and information events in the future.
