BROTHER:NEW PATENT TONER TRADEMARK PROG.

[Anonymous]

Brother gets 1st patent from accelerated examination program
WASHINGTON
– Plagued by a backlog of applications, the U.S. Patent and Trademark
Office now guarantees speedier reviews for companies willing to do some
extra work up front.But the express service, which on Thursday yielded
Brother International Corp. a patent on a printer cartridge in less
than six months, is being criticized by some patent attorneys who say
it could do more harm than good.Critics say the extra upfront research
and legal work raises the costs of doing business and potentially
exposes patent applicants to greater legal liabilities. If applicants
receiving speedy reviews leapfrog inventors using the traditional
process, there could be lengthy squabbles that the Patent Office has to
sort out.

The agency’s accelerated examination program, which
started in August and issued its first patent to Brother, guarantees
applicants a decision within one year, whereas patent reviews typically
last one to six years. From the agency’s standpoint, the expedited
reviews are critical in helping to relieve pressure on a work force
already burdened by a backlog of more than 700,000 applications.Under
the accelerated program, a more detailed application is required
upfront so that reviewers can assess relatively quickly whether an
invention is patent-worthy. Typically, examiners spend months, and
sometimes years, making this assessment, often because companies start
out with broad claims and then tailor them to focus on their specific
innovation.

Patent lawyers at some major companies are skeptical
of the new system, which has already attracted 236 applications from
businesses and individuals.“It substantially increases our costs and
the risk of the application being invalidated in court,” said Russ
Slifer, chief patent counsel at Micron Technology Inc., which has
received more than 14,000 U.S. patents in the last 10 years but has yet
to apply under the new accelerated program.The Boise, Idaho-based
company, which makes computer memory chips, is worried because courts
have the authority to invalidate patents based on findings of
“inequitable conduct.” That happens when applicants and their patent
attorneys fail to submit all known relevant information, or “prior
art,” used to assess if an invention is patent-worthy.If a Patent
Office examiner’s mistakes are revealed in court proceedings, there are
no legal consequences, Slifer said, “but if an applicant does that …
it appears they lied to the patent office.”If mistakes are made, the
stakes are high. A federal jury last month ruled that Microsoft
infringed on two MP3 patents from France’s Alcatel-Lucent SA and must
pay $1.52 billion in damages. The Redmond, Wash.-based company plans to
appeal.Patent Office Director Jon Dudas is aware of patent attorneys’
liability concerns and said he is willing to address them with
Congress.Another concern about the accelerated patent process is the
potential for applicants to bypass inventors stuck in the Patent
Office’s backlog. This is possible because the United States awards
patents on a “first to invent” basis, while most other nations use a
“first to file” standard.About 100 such disputes per year already
come up and are settled before the Patent Office’s appeals board.James
Arpin, a patent attorney and partner at Baker Botts LLP in Washington
who worked on the Brother patent, said the new process is not perfect
but it’s a step in the right direction.Henry Sacco, chief legal officer
for the Bridgewater, N.J.-based subsidiary of Brother’s Japanese
parent, said the company expects less than 5 percent of its 1,000
annual applications will go through the accelerated program, which
costs three to five times more when all the extra work is factored
in.The only added government cost is $130 for an accelerated exam,
which is tacked on to the regular fees totaling $2,400, although small
businesses and individuals pay half that much.

[Author]

March 21, 2007 at 10:27 AM