As you probably have heard, the US Trademark and Patent Office (USPTO) has some problems. For a number of years, there has been a battle raging over patent reform, with new Patent Acts proposed about every other year. The biggest problems facing inventors involve the backlog of patent applications. Not only can it take years to receive your patent, but also the Patent Office, in an attempt to deal with the backlog, is rejecting applications at record rates. This is certainly bad news for inventors, but if you read on, you can learn some tips in dealing with these problems.

At the end of 2008, there were over 1,200,000 total patent applications pending, about 800,000 of which were still awaiting first action. On average, it took 25.6 months for the Patent Office to take its first action with an application, despite the fact that under normal circumstances, it is only supposed to take 18 months for a patent to be issued! This is a serious and growing problem.

At the same time, there has been a lot of pressure for the quality of patents to increase. The Office of Patent Quality Assurance randomly pulls newly issued patents and reviews them. If they think the patent should have been rejected, the patent examiner who reviewed the application will get negative marks in his or her performance reviews. Then the performance reviews are used to determine employee bonuses. The result: examiners err on the side of caution so they don’t lose their bonuses.

Furthermore, rejecting applications is the easiest way to make in-house work quotas and cut down on the backlog. To give you an idea on how much this has affected the way examiners work, consider this: in the late 1990s, examiners rejected less than 30% of all patent applications; in the second quarter of 2009, they rejected 59%!

To compound these difficulties, two recent cases, KSR v. Teleflex and In Re Bilski, have also caused more changes and challenges for patents. KSR v. Teleflex was a case heard by the Supreme Court that has changed the way “obviousness” is defined for patent allowances, making it much more difficult to prove your patent application is “non-obvious.” In Re Bilski is a lower court decision that greatly restricts business method patents.

Is there hope? Yes. The USPTO is starting to make some changes. First, the former USPTO director, John Dudas, resigned and soon there should be a new director appointed who will hopefully turn the Patent Office around. Also current acting commissioner, Peggy Focarino, is starting some initiatives to train examiners to work more efficiently and allow more patents. Furthermore, In Re Bilski is currently in front of the Supreme Court and many are hoping that the decision will be turned over. In addition, there is talk that Congress might legislate over KSR v. Teleflex to make it easier to receive patents again.

So what should inventors do to deal with these challenges? We talked with Eric Hanscom about how he is advising inventors dealing with these challenges and what actions he has taken to deal with these changes.

“Our strategy in dealing with KSR and Bilski is to examine the Office Actions, and in the many cases where the application would have been likely to be allowed before KSR and Bilski, but is not probably not allowable under the new laws, to file a continuation-in-part (CIP) application and hope that the laws ch ange before the CIP is examined,” says Hanscom. With the long wait times at the USPTO, the chances are pretty good that something will change before a CIP is examined. The same goes for those who are facing final rejection. “We are also suggesting,” says Hanscom, “that clients who are facing a ‘Final Rejection’ consider filing for RCE’s (Requests for Continued Examination) or even appeal the rejections.” This again will buy them time and give them a chance to have changes take place before their application is reexamined.

To better deal with this situation, Hanscom has hired a former USPTO examiner to help go over Office Actions and advise on strategy to get around KSR v. Teleflex and In Re Bilski.

Hanscom adds one other piece of advice. The recent Egyptian Goddess case substantially strengthened design patents. Previously, he would only advise a client to get a design patent if it wasn’t possible to get a utility patent, but a fter KSR v. Teleflex , this is no longer the case. “Design patents are much less expensive, have a much higher rate of success (particularly after KSR and Bilski), and are examined much more quickly than utility patent applications (an average of 8 months as opposed to a year or two for most utility patent applications). Thus, until KSR is overturned, we are suggesting that clients who previously did not consider design patents to seriously consider them.” You will need to talk to him to find out if a design patent will work for you, but this will be good news for some inventors how can take advantage this recent development.

So there is hope, and some ways you can deal with this troublesome situation. Although there are many do-it-yourself patent books, we have always recommended working with a patent professional to make sure you get the best protection possible and to maximize the chances of getting a patent. Now more than ever you will want the best advice available to make sure you get a patent.

Related posts:

1. USPTO Offers Fast-Track Patent Applications for Independent Inventors
2. The Patent Reform Act of 2009
3. USPTO Considering Extending Provisional Patents
4. Is a Design Patent Right For You?
5. Patent Strategy – Part One