John Callegari, The Daily Record Newswire
A new federal law that will make it easier and cheaper for inventors to obtain patents on their designs overseas could further hobble America’s own rickety approval process, which has a backlog of 700,000 applications and wait times of as long as three years.
By contrast, Thomas Edison got a patent on the phonograph in less than two months.
The new law, called the Patent Law Treaties Implementation Act of 2012 and signed by President Barack Obama in December, allows inventors to submit one application with one set of fees to the United States’ Patent and Trademark Office for filing in the 60 countries that are members of the Hague Agreement, a trio of treaties that originally date to 1934.
President Bill Clinton agreed to join the international patent group in 1992, but Congress took until 2007 to ratify the treaties and another five years to pass the implementation legislation.
While membership in the treaty group will be a boon for U.S. patent seekers, it also gives easier access to foreign inventors wanting to protect their designs through the U.S. patent office.
In supporting the new law, the Congressional Budget Office said a surge in international applications “would not significantly increase the PTO’s workload,” but local patent attorneys aren’t so sure.
“We don’t get as many design patents filed here from foreign countries because we’ve typically been more stringent on approving them,” noted Gerald Bodner, a partner with the Melville-based intellectual property law firm Bodner & O’Rourke. “But now that these countries have a vehicle to submit it, we could see an increase. How much work will it generate? We can’t tell at this stage.”
David Denenberg, chairman of the intellectual property law group at Garden City-based Davidoff, Hutcher & Citron, agreed that the new law would result in more work for the PTO.
“You’re definitely going to see more foreign filings,” Denenberg said. “The sheer volume will keep the Patent [and Trademarks] office busy.”
One clause that augurs for speedier approvals: The treaties require the PTO to reject a design application from a foreign country within six months or the applicant is automatically awarded design rights here.
Richard Cameron, the founder of Hauppauge-based Carson Optical, also points to the PTO’s adjustable fee schedule, which allows inventors to fast-track their application by paying more.
“This will streamline the process for us,” said Cameron, whose firm holds 55 patents, including 14 filed overseas. “It’s difficult to prove something is inventive when it’s basically been made before, so design patents have become instrumental for us.”
The December law, which also extends U.S. patents from 14 years to 15 and is expected to provide greater protection from piracy, comes three months after passage of Obama’s America Invents Act, the most sweeping reform of U.S. patent law in 60 years.
The law aims changed the system by awarding patents to the first person to submit an application, rather than the original inventor. Like most legislation introduced during last year’s presidential election, America Invents was pitched as a job creator, although employment experts discounted the notion.
Opponents of the reforms have also worried that the law favors large companies that can file patents with greater speed than small inventors.
As for the international patent treaty, the market will indeed have to wait and see: Implementation of the law is not expected until late this year.
