Manatt Partner Irah Donner published an article in Bloomberg Law outlining a way to change the U.S. Patent Office’s current operating procedures to prioritize resources by eliminating the initial ex parte examination and only reviewing patents after an owner files an intent to enforce notification against an alleged infringer.
With more than 500,000 patent applications filed every year, the Patent Office has been overwhelmed by the volume of examinations since 35 U.S.C. Section 131 was implemented, which requires the Office to review every application filed, Donner said. Additionally, compounding the problem is the Patent Trial and Appeal Board (PTAB) overruling USPTO examiners at least 65% of the time, suggesting examiners may never have enough time to sufficiently examine patent applications.
Donner proposed to only examine patents after its owner has identified an alleged infringer and files an intent to enforce notification, which binds the owner to initiate civil litigation or some other penalty. Among other benefits, Donner said this method would allow the USPTO to focus resources on patents that are more likely to have an impact on society and reduce overall filing fees and costs to independent inventors and small entities.
Read the full article here.