Patent rights provide the support and the dynamism behind a developing currency of knowledge and information, but changes to legislation and practice are putting ever more onus on the inventor to provide the research and support behind each innovation, as Randy Lacasse, CEO of CPA Global Lacasse, explains to Emma Jones
A former US patent examiner and patent adviser for IBM’s IP department, Randy is well versed on the nuances of the patent process. He has prosecuted over 1,000 US patent applications involving technologies such as computer architecture, software, image processing, communications, semiconductors, mechanical engineering, automotive and general chemical applications.
It was this knowledge and his fascination with the industry that persuaded him to set up Lacasse in 1993. ‘We started off by specialising in fast-moving and cutting-edge technology areas, particularly computer architecture,’ he explains. ‘It was the era of computer giants such as Intel, a time when the speed of invention first started to exceed the pace of patent administration. Technology rich companies were crying out for the skills of a patent research company that could help them keep up with the pace of research and development, and we were able to provide the back-end support for some amazing innovation platforms.’
Navigating the backlog
While Randy is keen to stress that the company retains the flavour of its original technology-focused ethos, he is also steadfast on the importance of moving with the times and the need to help companies face the challenges and demands of a complicated and overstretched patent system. one such challenge arrived in the amends made to the patent application process at the US Patent and Trademark office (USPTO) in 2006: ‘The USPTO changed its rules to allow inventors to bypass the patent pendency period [currently three to four years in the US],’ explains Randy. ‘It was an important step. The backlog in patent applications was such that it risked stifling progress, particularly in the fast-paced world of technology. Companies often wouldn’t hear news of the success or failure of their patent application until a couple of years into the product’s life cycle, making it difficult for them to protect and build on their innovation.’
'Companies often wouldn’t hear news of the success or failure of their patent application until a couple of years into the product’s life cycle, making it difficult for them to protect and build on their innovation.' - Randy Lacasse
In order to alleviate this problem, the USPTO established an accelerated review process offering applicants a 12-month deadline for a final decision by the examiner on whether their patent application would be granted or denied. According to Jon Dudas, USPTO’s director, the first patent was issued in less than six months from the date it was filed under the new Accelerated examination procedure. ‘Accelerated examination can provide innovators with the early certainty they may need to attract investors or protect their inventions against infringers,’ he explains.
However, for many, the accelerated review process is a double-edged sword. ‘While it provides an important route to patent knowledge, preparing a patent application for the accelerated process is not a simple task,’ says Randy. ‘To be eligible, applicants are required to provide specific information so that review of an application can be completed rapidly and accurately.’ This information includes conducting their own search of prior art, submitting all prior art that is closest to their invention, explaining what the prior art teaches and how their invention is distinctive.
Aware that only a small minority of applicants would have the expertise, knowledge or time to conduct their own search, CPA Lacasse has stepped in to provide its clients with the resources they need to manage the USPTO’s new accelerated process. ‘Very few patent research companies have a prosecution background,’ says Randy. ‘That means that while they can provide a comprehensive search, the applicant still needs to retain counsel to provide the legal foundation for the application. CPA Lacasse is able to provide both required elements and we are one of the first companies to be accepted to do so by the USPTO.’
A fast track to success
Despite some criticism of the USPTO’s decision to place more emphasis on the applicant, Randy is clear on the benefits of the accelerated application process: ‘providing corporations with an earlier decision is invaluable,’ he says. ‘Once granted, patents can be automatically generated into licensing revenue or leveraged for considerable business advantage.’ If your patent application is held in a queue, you lose valuable licensing time and, therefore, revenue, as you can’t license a right that you don’t hold. ‘Even if the patent is refused, it allows the company the opportunity to reassess their strategy overseas,’ Randy explains.
‘A failed application at the USPTO can give notice of likely success in associated patent offices, providing companies with the opportunity to reconsider or refine their applications for the necessary level of distinctiveness.’
- New legislation going through congress (bills HR 1908 and S1145) may soon require all patent applications to have an accelerated exam-type search and analysis. Visit www.uspto.org for more information or to see how CPA Lacasse could help you provide the information needed to support your application, visit www.cpaglobal.com/patents/research, call +1 703 838 7688 or email firstname.lastname@example.org.
This article first appeared in IP Review, issue 19