United States Patent and Trademark Office

The United States Patent and Trademark Office (PTO or USPTO) is an agency in the United States Department of Commerce that provides patent and trademark protection to inventors and businesses for their inventions and corporate and product identification. The PTO is currently based in Alexandria, Virginia, after a recent move from the Crystal City area of Arlington, Virginia. Since 1991, the office has been fully funded by fees charged for processing patents and trademarks. The current head of the USPTO is Under Secretary of Commerce for Intellectual Property Jon W. Dudas, a position to which he was nominated by President George W. Bush in March 2004 and appointed July 30, 2004.

Mission

The mission of the PTO is to promote "industrial and technological progress in the United States and strengthen the national economy" by:

administering the laws relating to patents and trademarks;
advising the Secretary of Commerce, the President of the United States, and the administration on patent, trademark, and copyright protection; and
providing advice on the trade-related aspects of intellectual property.

Structure

The PTO has about 7,300 employees, nearly all of whom are based at its huge five-building headquarters complex in Alexandria. Of those, about 3,000 are patent examiners and 400 are trademark examiners; the rest are support staff. Patent examiners are generally scientists and engineers who do not necessarily hold law degrees, while all trademark examiners must be licensed attorneys. All examiners work under a strict quota system.

Fee diversion

Each year, Congress "diverts" about 10% of the fees that the USPTO has collected into the general treasury of the United States. In effect, this takes monies collected from the patent system to use for the general budget. This fee diversion is generally opposed by patent practitioners (e.g patent attorneys and patent agents), inventors, and the USPTO [1]. These stakeholders would rather use the funds to improve the patent office and patent system, such as by implementing the USPTO's 21st Century Strategic Plan [2].

Patents

Each year, the PTO issues thousands of patents to companies and individuals all around the world. As of March 2006, the PTO has issued over seven million patents.

The X-Patents (the first 10,000 issued between 1790 and 1836) were destroyed by a fire; less than 3,000 of those have been recovered and re-issued with numbers ending in "X" to distinguish them from those issued after the fire.

On July 31, 1790, the USPTO awarded its first patent to Samuel Hopkins for an improvement "in the making Pot ash and Pearl ash by a new Apparatus and Process." This patent was signed by then president George Washington.

Representation

Patent attorney, agent registration

The PTO only allows certain qualified persons to practice before the PTO. Practice includes filing of patent applications on behalf of inventors, prosecuting patent applications on behalf of inventors, and participating in administrative appeals and other proceedings before the PTO examiners and boards. The PTO sets its own standards for who may practice and requires that any person who practices become registered. An USPTO-registered non-attorney professional is called a patent agent and an USPTO-registered attorney is called a patent attorney.

In order to become registered to practice before the USPTO, an applicant must demonstrate to the USPTO's satisfaction certain scientific and technical competencies and then pass a difficult USPTO-administered patent bar exam called the USPTO registration examination. This bar exam covers the voluminous regulations and procedures that govern USPTO practice. The registration process is managed by the USPTO's Office of Enrollment & Discipline (OED).[3]

Filing a patent yourself

An individual inventor may file and prosecute a patent application by themselves. This is called filing a patent pro se. The inventor does not need to be represented by a registered patent attorney or patent agent. If it appears to a patent examiner, however, that an inventor filing a pro se application is not familiar with the proper procedures of the patent office, then the examiner may suggest that it is desirable for the inventor to obtain representation by a licensed patent attorney or agent (see Manual of Patent Examining Procedure, Chapter 400).

The patent examiner cannot recommend a patent attorney or agent, but the patent office does post a list of registered attorneys or agents.

It is not uncommon for individual inventors to file their own patents to potentially save thousands of dollars in agent/attorneys fees, since legal fees for the preparation and filing of a US patent application can run more than US$20,000.

There are many self-help books in publication explaining how to file your own patent, such as Patent it Yourself. The US patent office also has a free help line called the "Inventors Assistance Center" where retired patent examiners will provide advice to members of the public on how to follow the procedures and rules of the patent office.

Electronic Filing System

The USPTO will accept patent applications filed in electronic form. As of March 2006, inventors or their patent agents/attorneys can file applications as pdf documents. The web page for submitting applications is https://sportal.uspto.gov/secure/portal/efs-unregistered. Filing fees can be paid by credit card or by a USPTO “deposit account”.

Criticisms

Controversial patents

In November 2005, the USPTO was criticized by physicists for granting U.S. patent 6,960,975 for an anti-gravity device. The journal Nature first highlighted this patent issued for a device that presumably amounts to a perpetual motion machine, defying the laws of physics [4] [5] [6] [7]. The device comprises a particular electrically superconducting shield and elecromagnetic generating device. The examiner allowed the claims because the design of the shield and device was novel and not obvious. See second listing of "Notice of Allowance"

In situations such as this where a substantial question of patentability is raised after a patent issues, the Commissioner of the Patent Office can order a reexamination of the patent. This has happened before, for example, when the Patent Office issued a patent for a method for "swinging on a swing" (U.S. patent 6,368,227). The patent was rejected upon subsequent reexamination because the examiner found that the distinguishing feature of the invention, "yelling like Tarzan", did not "particularly point out and distinctly claim the subject matter which applicant regards as the invention" (35 USC 112, second paragraph) (see Reexam - Final Rejection).

Slow patent examination

The US patent office has been criticized for taking an inordinate amount of time in examining patent applications. This is particularly true in the fast growing area of business method patents. As of 2005, patent examiners in the business method area were still examining patent applications filed in 2001.

The delay has been attributed by spokesmen for the Patent Office to a combination of a sudden increase in business method patent filings after the 1998 State Street Bank decision, the unfamiliarity of patent examiners with the business and financial arts (e.g. banking, insurance, stock trading etc.), and the issuance of a number of controversial patents (e.g. U.S. patent 5,960,411 "Amazon one click patent") in the business method area.

The Patent Office has recently begun (as of 2005) an aggressive hiring campaign for increasing the number of examiners in the business method area to help address the problem of undue delay in examination. One hundred twenty-nine examiners were hired in July 2006 alone. [8]

External links

USPTO