Patents
Information about the Publication Provisions of the American Inventors Protection Act Gao ID: GAO-04-603 May 20, 2004The U.S. Patent and Trademark Office (USPTO) receives over 300,000 patent applications each year. Before the American Inventors Protection Act of 1999, USPTO was required by law to keep the information on patent applications confidential until a patent was granted. The act modified this requirement and mandated that USPTO publish most patent applications 18 months after filing. One exception to this requirement is available to patent applicants filing only in the United States. These applicants can request that their application not be published. The act required GAO to provide information on how patent applications have been affected by the 18-month publication provisions. GAO was required to determine (1) the number of patent applications filed only in the United States, and (2) whether certain differences exist between published and unpublished patent applications. Specifically, GAO examined differences relating to whether the applicant was a large or small entity, the percentage of patents issued by USPTO and applications abandoned by the applicants, and the length of time between filing an application and when USPTO issued a patent or the application was abandoned.
Of the approximately 805,000 patent applications USPTO received between November 29, 2000, and November 28, 2003, about 88,000 were filed by applicants certifying they would apply for a patent only in the United States. Subsequently, 8,000 of these applicants rescinded this certification. For about 275,000 applications, the applicants indicated they had already applied for a patent abroad. For the remaining 450,000 applications, USPTO's database does not provide the information needed to determine whether the applicants intend to file in the United States alone or also abroad. GAO found four differences between the published and unpublished patent applications that USPTO received between November 29, 2000, and November 28, 2003. USPTO has published or plans to publish applications from about 85 percent of the applicants qualifying as large entities compared with only about 74 percent of those qualifying as small entities. USPTO issued patents to about 22 percent of the applications it had published and considered about 8 percent abandoned, although resolution for most of the approximately 456,000 published patent applications is still pending. For applications it did not publish, USPTO issued patents to about 25 percent and considered about 19 percent abandoned, although resolution for most of these approximately 117,000 applications is also still pending. The median length of time for the agency's review of an issued patent was about 20 months for those applications that had been published and about 15 months for those not published. The median length of time between filing and abandonment of an application was about 18 months for published applications and about 8 months for those not published.
GAO-04-603, Patents: Information about the Publication Provisions of the American Inventors Protection Act
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Report to Congressional Committees:
May 2004:
PATENTS:
Information about the Publication Provisions of the American Inventors
Protection Act:
[Hyperlink, http: //www.gao.gov/cgi-bin/getrpt?GAO-04-603]:
GAO Highlights:
Highlights of GAO-04-603, a report to congressional committees
Why GAO Did This Study:
The U.S. Patent and Trademark Office (USPTO) receives over 300,000
patent applications each year. Before the American Inventors Protection
Act of 1999, USPTO was required by law to keep the information on
patent applications confidential until a patent was granted. The act
modified this requirement and mandated that USPTO publish most patent
applications 18 months after filing. One exception to this requirement
is available to patent applicants filing only in the United States.
These applicants can request that their application not be published.
The act required GAO to provide information on how patent applications
have been affected by the 18-month publication provisions. GAO was
required to determine (1) the number of patent applications filed only
in the United States, and (2) whether certain differences exist between
published and unpublished patent applications. Specifically, GAO
examined differences relating to whether the applicant was a large or
small entity, the percentage of patents issued by USPTO and
applications abandoned by the applicants, and the length of time
between filing an application and when USPTO issued a patent or the
application was abandoned.
In commenting on a draft of this report, USPTO provided technical
comments that we have incorporated, as appropriate.
What GAO Found:
Of the approximately 805,000 patent applications USPTO received between
November 29, 2000, and November 28, 2003, about 88,000 were filed by
applicants certifying they would apply for a patent only in the United
States. Subsequently, 8,000 of these applicants rescinded this
certification. For about 275,000 applications, the applicants indicated
they had already applied for a patent abroad. For the remaining 450,000
applications, USPTO‘s database does not provide the information needed
to determine whether the applicants intend to file in the United States
alone or also abroad, as the figure below indicates.
GAO found four differences between the published and unpublished patent
applications that USPTO received between November 29, 2000, and
November 28, 2003:
* USPTO has published or plans to publish applications from about 85
percent of the applicants qualifying as large entities compared with
only about 74 percent of those qualifying as small entities.
* USPTO issued patents to about 22 percent of the applications it had
published and considered about 8 percent abandoned, although resolution
for most of the approximately 456,000 published patent applications is
still pending. For applications it did not publish, USPTO issued
patents to about 25 percent and considered about 19 percent abandoned,
although resolution for most of these approximately 117,000
applications is also still pending.
* The median length of time for the agency‘s review of an issued patent
was about 20 months for those applications that had been published and
about 15 months for those not published.
* The median length of time between filing and abandonment of an
application was about 18 months for published applications and about 8
months for those not published.
Domestic and Foreign Applications Filed with USPTO, November 29, 2000,
through November 28, 2003:
[See PDF for image]
[End of figure]
www.gao.gov/cgi-bin/getrpt?GAO-04-603.
To view the full product, including the scope and methodology, click on
the link above. For more information, contact Anu K. Mittal at (202)
512-3841or Mittala@gao.gov.
[End of section]
Contents:
Letter:
Results in Brief:
Background:
USPTO's Database Does Not Include Information on the Status of Many
Applications:
Some Differences Exist between Published and Unpublished Applications:
Agency Comments and Our Evaluation:
Appendixes:
Appendix I: Scope and Methodology:
Appendix II: GAO Contacts and Staff Acknowledgments:
GAO Contacts:
Staff Acknowledgments:
Table:
Table 1: Comparison of Published and Unpublished Applications, November
29, 2000, through November 28, 2003:
Figures:
Figure 1: USPTO's Patent Application Examination and Publication
Process:
Figure 2: Domestic and Foreign Applications Filed with USPTO, November
29, 2000, through November 28, 2003:
Figure 3: Status of Applications Filed by Inventors Qualifying as Large
Entities, November 29, 2000, through November 28, 2003:
Figure 4: Status of Applications Filed by Inventors Qualifying as Small
Entities, November 29, 2000, through November 28, 2003:
Abbreviations:
PALM: Patent Application Location and Monitoring System:
USPTO: United States Patent and Trademark Office:
Letter May 20, 2004:
The Honorable Orrin G. Hatch
Chairman
The Honorable Patrick Leahy
Ranking Minority Member
Committee on the Judiciary
United States Senate:
The Honorable F. James Sensenbrenner Jr.
Chairman
The Honorable John Conyers Jr.
Ranking Minority Member
Committee on the Judiciary
House of Representatives:
The U.S. Patent and Trademark Office (USPTO) administers the nation's
patent laws to protect inventions and encourage innovation by examining
applications and granting patents to qualified inventors for a period
of time. A patent provides inventors with certain property rights to
the invention.[Footnote 1] Between fiscal years 1998 and 2003, USPTO
received an average of about 317,000 patent applications annually.
Following the enactment of the American Inventors Protection Act of
1999,[Footnote 2] USPTO significantly changed its processes for
publishing patent applications, bringing U.S. patent policy into
greater harmony with the policies of most other nations. Effective
November 29, 2000, USPTO generally must publish patent applications 18
months after the application is first filed anywhere. Previously, USPTO
published patent applications when patents had been issued--for fiscal
year 2003, a patent was typically issued about 28 months after the
filing of the application.[Footnote 3] With this new publication
requirement, other inventors, in the United States and abroad, may be
able to improve upon the invention in the original application and
submit their own patent application more quickly. While the new
publication requirement may accelerate the pace of innovation, it also
raised concerns among some smaller entities--individual inventors,
nonprofit organizations, and enterprises with 500 or fewer employees--
that larger competitors might be able to take advantage of the
published information and use their greater resources to reap benefits
in the marketplace before USPTO has granted a patent to the original
inventor.
The 1999 act contains two provisions to address the concerns of these
smaller entities. First, it allows all inventors to avoid publication
by certifying, when they file their application, that they are, in
essence, filing for a patent only in the United States.[Footnote 4]
Generally, applications that do not include such certification are
automatically published 18 months after they are first filed. Second,
inventors whose applications are published, and who have been issued
patents, may be able to collect compensation[Footnote 5] retroactively
to the date of publication from those who use the invention without
approval. Since inventors are responsible for enforcing their patent
rights, without the aid of USPTO, the potential litigation costs could
deter some inventors from seeking to recover reasonable compensation.
While inventors may certify that they are seeking a patent only in the
United States, they may rescind their certification at any time.
Inventors may rescind their requests for several reasons, such as
deciding to seek a patent abroad or to become eligible to collect
compensation from others who are using their invention without
approval. An applicant who makes a certification and later files in
another country directly or under an international agreement must
notify USPTO of such filing within 45 days. According to USPTO
officials, the agency records in its database both those that
specifically rescind their certification and those that provide notice
as having rescinded their certification.[Footnote 6] In both cases,
USPTO publishes information on the application as it would for any
other application. USPTO does not require patent applicants who do not
certify to indicate whether they intend to file in only the United
States or whether they also intend to file abroad.
The American Inventors Protection Act required GAO to provide
information on patent applications affected by the 18-month publication
provisions. In response, we analyzed USPTO's database for applications
submitted to the agency during a 3-year period--November 29, 2000,
through November 28, 2003--to determine (1) the number of applications
seeking patents only in the United States, the number that requested at
the time of filing not to be published, and the number that later
rescinded that request; and (2) whether certain differences exist
between published and unpublished patent applications. Specifically,
GAO examined differences relating to whether the applicant was a large
or small entity, the percentage of patents issued by USPTO and
applications that were abandoned, and the length of time between the
applicants' filing of an application and either USPTO's issuing of a
patent or the application being abandoned.[Footnote 7]
To address these questions, we examined USPTO records of the patent
applications filed or published between November 29, 2000, and November
28, 2003. We interviewed program officials to determine how these
records are maintained and to interpret the data the records contain.
We assessed the completeness and accuracy of the data we used in our
review by (1) performing electronic tests of relevant fields and (2)
reviewing related program and system documentation, as well as audit
and system reviews and reports. We determined that the data were
sufficiently reliable for the purpose of our review. For about 44
percent of patent applications, USPTO's data allowed us to determine
whether the applicants sought patent protection only in the United
States or in both the United States and other countries. For the
remaining 56 percent of applications, we relied on USPTO officials'
best estimates of how many applicants would also seek patent protection
outside of the United States. To obtain a better understanding of
patent law, we discussed patent issues with USPTO economists and
attorneys. We conducted our work from June 2003 through April 2004 in
accordance with generally accepted government auditing standards.
Results in Brief:
USPTO's database does not provide information for many applications
regarding whether the applicant intends to file only in the United
States or in both the United States and abroad. Of the approximately
805,000 patent applications USPTO received between November 29, 2000,
and November 28, 2003, about 88,000 were filed by applicants certifying
they would apply for a patent only in the United States. Subsequently,
8,000 of these applicants rescinded this certification. For about
another 275,000 applications, the applicants indicated they had already
applied for a patent in another country. For the remaining 450,000
applications, USPTO's database does not provide the information needed
to determine whether the applicants intend to file in the United States
alone or also in another country.
We found four differences between the published and unpublished patent
applications USPTO received between November 29, 2000, and November 28,
2003:
* USPTO has published or plans to publish applications from about 85
percent of the applicants qualifying as large entities compared with
only about 74 percent of those qualifying as small entities.
* USPTO issued patents to about 22 percent of the applications it had
published and considered about 8 percent abandoned, although resolution
for most of the approximately 456,000 published patent applications is
still pending. For applications it did not publish, USPTO issued
patents to about 25 percent and considered about 19 percent abandoned,
although resolution for most of these approximately 117,000
applications is also still pending.
* The median length of time for the agency's review of an issued patent
was about 20 months for applications that had been published and about
15 months for those not published.
* The median length of time between the filing and abandonment of an
application was about 18 months for published applications and about 8
months for those not published.
In commenting on a draft of this report, USPTO provided technical
comments that we have incorporated, as appropriate.
Background:
USPTO administers the nation's patent and trademark laws to protect
inventions, encourage innovation, and advance science and technology
through the preservation and dissemination of patent information. The
principal effect of patent law in a market economy is that it provides
the economic incentive for inventors to devote resources to
technological innovation. Granting the inventor exclusive rights to
control the use of the patented invention produces this effect.
Patent rights do not rise automatically, however. Inventors who seek
patent protection must first prepare applications that fully disclose
and clearly claim their inventions. Before issuing a patent, USPTO
examines the application to verify that the patent is new, useful, and
nonobvious.[Footnote 8] See figure 1 for a description of the
application examination and publication process. If the agency issues a
patent, the inventor has, in most instances, exclusive rights to the
invention until 20 years from the date the application was first filed.
Patents typically fall into one of three categories: (1) utility--for
useful inventions, such as processes, machines, articles of
manufacture, or composition of matter; (2) design--for changes in
configuration, shape, or surface ornamentation that do not involve
changes in function; or (3) plant--for asexually reproducible
plants.[Footnote 9] The publication provisions of the American
Inventors Protection Act apply only to applications for plant and
utility patents, which constitute most of the applications
filed.[Footnote 10]
Figure 1: USPTO's Patent Application Examination and Publication
Process:
[See PDF for image]
[End of figure]
Until 1999, USPTO was required to keep in confidence submitted patent
applications, and applicants had no enforceable patent rights before
the issue date of the patent. The American Inventors Protection Act of
1999 removed this confidentiality, so that, with certain exceptions,
such as applications subject to a secrecy order for reasons of national
security, patent applications filed on or after November 29, 2000, will
be published 18 months after they are first filed. In exchange for the
loss of confidentiality and the public dissemination of this
proprietary information, the applicant may be able to obtain
compensation retroactively to the date of publication from those who
use an invention without approval.[Footnote 11]
USPTO may publish some applications earlier than 18 months. Some
inventors, for example, request that their applications be published
early. Applications that are first filed abroad will also normally be
published in fewer than 18 months after being filed in the U.S. This is
because USPTO designates an application's publication date as 18 months
from when it was first filed, regardless of whether that occurred in
the United States or abroad. Applicants who file first in another
country and wish to obtain a patent in the U.S. must file with USPTO
within a year.[Footnote 12] If such an applicant took 12 months to file
with USPTO, the agency would then publish the application within 6
months. If, for example, such an application was abandoned 9 months
after it was published, then USPTO's database would show that the
application was abandoned in 15 months--the number of months that had
passed since the application had been filed in the U.S.--rather than
the 27 months that had passed since the application had been first
filed anywhere.
Proponents of the act believe that the changes brought U.S. patent
policy into greater harmony with the policies of nearly all other
nations and will increase the rate at which dissemination of new
technology occurs, thus speeding the diffusion of knowledge and
avoiding the duplication of research expenditures by competing firms.
Some inventors, however, objected to the early disclosure requirement
of the act. For example, a group of 26 Nobel laureates claimed that
this practice would be most harmful to small inventors and would
discourage the flow of new inventions. They pointed out that the
patents most affected by early disclosure would likely be breakthrough
inventions, often made by independent inventors, that take time to
progress from application to an issued patent. Independent inventors
and smaller entities have also expressed concern that the new law aids
larger entities that have greater resources, at the expense of smaller
entities. They contend that smaller entities are less able to obtain
legal redress if larger firms use their inventions without approval,
and are less able to keep pace if a larger firm attempts to invent
around the patent--that is, to improve the patented device enough to
apply for a separate patent.
The 1999 act allows all inventors not intending to seek patent
protection abroad to request that USPTO publish the application only
when it issues the patent. Such inventors also have the option of
rescinding the original request before USPTO issues a patent and asking
the agency to publish the application as it would other applications.
USPTO's Database Does Not Include Information on the Status of Many
Applications:
USPTO's database does not provide information for many applications
regarding whether the applicant intends to file only in the United
States or in both the United States and abroad. Our analysis of USPTO's
database indicates that of the approximately 805,000 applications USPTO
received, applicants certified they would apply for a patent only in
the United States in about 80,000 applications. Although about 88,000
applications originally included this certification in their
applications, about 8,000 applicants later rescinded this
certification.[Footnote 13] Consequently, these 80,000 applications
are exempt from the publication provisions of the American Inventors
Protection Act because they are filing for patent protection only in
the United States. In about 275,000 applications, the applicants
indicated they had applied for a patent in another country. As a
result, these applications are subject to the publication provisions of
the American Inventors Protection Act, and USPTO will publish these
applications within 18 months of when they were originally filed.
USPTO's database does not provide the information needed to determine
definitively whether the applicants for the remaining 450,000
applications intended to apply for a patent only in the United States
or in both the United States and abroad. However, USPTO officials
estimated that for about one-third of such applications, the applicants
generally seek patent protection in both the United States and abroad.
Applying this proportion to the 450,000 applications for which no
information is available, about 300,000 were likely to seek patents
only in the United States and about 150,000 were likely to seek patents
in both the United States and abroad.[Footnote 14] By combining these
estimates with the data for the applications that we could definitively
identify from the database, we calculated that about 380,000
applications (about 47 percent) likely were filed only in the United
States, and about 425,000 (about 53 percent) likely were filed in both
the United States and other countries.[Footnote 15] See figure 2.
Figure 2: Domestic and Foreign Applications Filed with USPTO, November
29, 2000, through November 28, 2003:
[See PDF for image]
[End of figure]
Some Differences Exist between Published and Unpublished Applications:
We found four differences between the published and unpublished
applications filed with USPTO between November 29, 2000, and November
28, 2003.[Footnote 16] First, USPTO published, or plans to publish,
applications filed by inventors qualifying as large entities at a
somewhat higher rate (85 percent) than those filed by inventors
qualifying as small entities (74 percent). Of the approximately 580,000
applications filed by large entities, USPTO published about 60 percent
and listed another 25 percent as eligible for publication--that is, the
applications will be published 18 months after they were first filed.
About 12 percent of the applications filed by inventors qualifying as
large entities are ineligible for publication--typically because the
applicants certified that they will file only in the United States.
USPTO's database does not provide the information needed to determine
the publication status for the remaining 3 percent.
For the approximately 225,000 applications filed by inventors
qualifying as small entities, USPTO published about 46 percent and
lists another 28 percent as eligible for publication. About 22 percent
of the applications filed by inventors qualifying as small entities are
ineligible for publication. USPTO's database does not provide the
information needed to determine the publication status for the
remaining 4 percent. See figures 3 and 4.
Figure 3: Status of Applications Filed by Inventors Qualifying as Large
Entities, November 29, 2000, through November 28, 2003:
[See PDF for image]
[End of figure]
Figure 4: Status of Applications Filed by Inventors Qualifying as Small
Entities, November 29, 2000, through November 28, 2003:
[See PDF for image]
[End of figure]
Second, although the rate at which USPTO issued patents to published
and unpublished applications differed only slightly, the rate at which
applicants abandoned published applications and unpublished
applications differed significantly. Of the approximately 456,000
applications USPTO published, about 70 percent are still pending, about
22 percent were issued patents, and 8 percent were considered
abandoned. Similarly, of the approximately 117,000 applications USPTO
did not publish, about 56 percent are still pending, about 25 percent
were issued patents, and 19 percent were considered abandoned. For a
summary of these differences, see table 1.
Table 1: Comparison of Published and Unpublished Applications, November
29, 2000, through November 28, 2003:
Applications: Issued as patents;
Number: Published (% of total): Applications: 102,200 (22);
Number: Unpublished (% of total): Applications: 29,300 (25).
Applications: Abandoned[A];
Number: Published (% of total): Applications: 37,300 (8);
Number: Unpublished (% of total): Applications: 22,300 (19).
Applications: Pending;
Number: Published (% of total): Applications: 316,200 (70);
Number: Unpublished (% of total): Applications: 65,500 (56).
Applications: Total[B];
Number: Published (% of total): Applications: 455,700 (100);
Number: Unpublished (% of total): Applications: 117,100 (100).
Median pendency in months: Filing to patent issue;
Number: Published (% of total): Applications: 20;
Number: Unpublished (% of total): Applications: 15.
Median pendency in months: Time to abandonment;
Number: Published (% of total): Applications: 18;
Number: Unpublished (% of total): Applications: 8.
Source: GAO analysis of USPTO data.
Note: Numbers are rounded to the nearest 100.
[A] According to USPTO officials, the difference in the rate at which
published and unpublished applications are abandoned occurs primarily
because nearly all patent applications abandoned within about 18 months
of filing are listed as unpublished.
[B] This analysis excludes approximately 206,000 applications USPTO
considers eligible for publication but that have been neither issued
nor abandoned, and approximately 26,000 applications that have not yet
reached the stage at which publication status can be determined.
[End of table]
Third, USPTO took longer to issue patents that had been published (a
median time of about 20 months) than those that had not been published
(about 15 months). According to agency officials, the difference occurs
primarily because examiners sometimes complete their review and decide
to issue a patent in fewer than 18 months. In these cases, USPTO does
not publish the application because the issued patent will itself be
published and become public information. As a result, the median length
of time for unpublished patents is less.
Fourth, for applications considered abandoned, the median length of
time between filing and abandonment was longer for published
applications (about 18 months) than for those not published (about 8
months). According to USPTO officials, this difference occurs primarily
because nearly all patent applications abandoned within about 18 months
of filing are not published.
Agency Comments and Our Evaluation:
In commenting on a draft of this report, USPTO provided technical
comments that we have incorporated, as appropriate.
We are sending copies of this report to the appropriate House and
Senate committees; interested Members of Congress; the Secretary of
Commerce; the Director, USPTO; the Director, Office of Management and
Budget; and other interested parties. We are also providing copies to
others upon request. In addition, the report is available at no charge
on GAO's Web site at http://www.gao.gov.
If you or your staff have any questions about this report, please
contact me at (202) 512-3841. Key contributors to this report are
listed in appendix II.
Signed by:
Anu K. Mittal,
Director, Natural Resources and Environment:
[End of section]
Appendixes:
[End of section]
Appendix I: Scope and Methodology:
To provide information on the patent applications affected by the
American Inventors Protection Act of 1999, we analyzed data obtained
from the U.S. Patent and Trademark Office's (USPTO) Patent Application
Location and Monitoring system (PALM).[Footnote 17] We used these data
to determine the number of applications USPTO received, the number of
applications certifying that they would be filed only in the United
States, and the number that rescinded this certification. PALM also
contained data we used to determine whether applicants had filed an
application for the same invention in another country before filing
with USPTO. In addition, we used PALM data to analyze whether
differences existed between published and unpublished applications in
terms of the relative size of the applying entity, the length of time
USPTO reviewed the application before it was issued or abandoned, and
the rate at which applications were issued or abandoned.
In about 44 percent of the cases, the USPTO data provided information
about whether applicants sought patent protection only in the United
States or in both the United States and elsewhere. For the remaining 56
percent of the cases, USPTO's database does not provide the information
needed to determine whether the applicants have filed or intend to file
in the United States alone or also in another country. We discussed
other possible sources of information about these cases with USPTO
program officials, attorneys, and economists. These USPTO officials
noted that while they had conducted one study that provided some data
as to whether applicants filed in the United States alone or also in
another country, the limitations of the study's methodology and results
precluded any statistically valid use of the information. Three other
studies we examined had similar methodological limitations that
precluded their use.
The USPTO officials with whom we discussed these issues estimated that,
based on their professional experience, for about one-third of the
applications filed in the United States, applicants may subsequently
file in another country after filing with USPTO. Although we used this
estimate to determine the potential number of applications that may
have been filed in the United States only and in both the United States
and abroad, use of this estimate should be considered in light of the
limitation that it could not be corroborated by other methodologically
sound independent sources.
We assessed the reliability of USPTO's PALM data that we used in our
analysis by (1) performing electronic testing of relevant data
elements, (2) reviewing existing information about the data and the
system that produced them, (3) interviewing agency and contractor
officials knowledgeable about the data, and (4) reviewing audit and
system reports on accuracy of data entry performed by contractors. We
determined that the data were sufficiently reliable for the purposes of
this report.
To determine if studies analyzing the impact of the American Inventors
Protection Act had been conducted by any other entity, we interviewed
officials from the Intellectual Property Owners Association, the
American Intellectual Property Law Association, and the National
Intellectual Property Researchers Association. To explore the
practicality of conducting a survey of patent attorneys to determine
how many patent applications were filed only in the United States or in
both the United States and abroad, we contacted patent attorneys around
the United States representing private legal firms, corporations,
academia, and government. After discussions with these officials, we
concluded that a survey was not feasible because of concerns about
attorney/client confidentiality.
We conducted our work from June 2003 through April 2004 in accordance
with generally accepted government auditing standards.
[End of section]
Appendix II: GAO Contacts and Staff Acknowledgments:
GAO Contacts:
Anu K. Mittal, (202) 512-3841 Cheryl Williams, (404) 679-1991:
Staff Acknowledgments:
In addition to those named above, Oliver Easterwood, Judy Pagano, Elsie
Picyk, Paul Rhodes, Stuart Ryba, Carol Herrnstadt Shulman, and Mindi
Weisenbloom made key contributions to this report.
(360369):
FOOTNOTES
[1] Specifically the inventor has the right to exclude others from
making, using, offering for sale, or selling the invention in the
United States or importing the invention into the United States.
[2] The American Inventors Protection Act of 1999 was incorporated and
enacted into law on November 29, 1999, by Section 1000(a)(9), Div. B,
of Pub. L. No. 106-113, 113 Stat. 1501, 1536 (1999).
[3] The length of time between the filing of an application and the
issuance of the patent is commonly referred to as "pendency."
[4] The applicant could also file in 1 or more of the 13 countries,
such as Malaysia or Saudi Arabia, that do not require applications to
be published within 18 months of being filed. Throughout this report we
refer to filing in another country as filing in 1 or more countries
that require applications to be published within 18 months of being
filed.
[5] The statute provides for a "reasonable royalty."
[6] Throughout this report we include both those that specifically
rescinded their certification and those that provided notice as
applications for which the certification has been rescinded.
[7] An application that has been declared abandoned is no longer
pending. The most common reason for abandonment is when the applicant
does not respond to USPTO's requests for additional information, such
as to clarify technical questions or address procedural issues, within
the time period provided.
[8] The term "nonobvious" refers to an invention that would not have
been obvious to persons having ordinary skill in the art (subject
matter) to which the invention pertains.
[9] A fourth category, "reissue patents," refers to patents that USPTO
grants as replacements for any patent that was in some way defective.
These patents constitute less than one-half of 1 percent of patents
issued in fiscal year 2003.
[10] Since plant patents constitute less than one-third of 1 percent of
the patents affected by the act, we did not segregate plant patents
from utility patents in our analysis.
[11] There are certain conditions attached to this right. Specifically,
the unauthorized user must be notified of the patent, the invention as
described in the patent must be substantially the same as the one
described in the application, and the inventor must litigate within six
years of when the patent was issued.
[12] In accordance with a provision of the March 20, 1883, Paris
Convention for the Protection of Industrial Property (as revised),
applicants have 12 months from the first filing of a foreign
application to file a counterpart application in the United States.
[13] In addition, our analysis shows that as of November 28, 2003,
there were about 61,000 applications for which the applicant still had
the opportunity to rescind certification.
[14] The USPTO officials with whom we discussed these issues estimated
that, based on their professional experience, for about one-third of
applications filed in the United States filers will subsequently file
in another country after filing with USPTO. Use of this estimate should
be considered in light of the limitation that this estimate could not
be independently corroborated and should be considered only as an
approximation. See appendix I for additional discussion.
[15] We derived 380,000 by combining the 80,000 applications identified
in USPTO's database as containing a certification that the applicant
would file only in the United States with the 300,000 that are
estimated by USPTO officials as likely to have only filed in the United
States. We derived 425,000 by combining the 275,000 applications in
USPTO's database for which applicants said they had filed in another
country with the 150,000 applications USPTO officials estimated are
likely to have also filed abroad.
[16] Unpublished applications refer to those that USPTO lists as
ineligible for publication.
[17] We analyzed applications that were either (1) filed between
November 29, 2000, and November 28, 2003, or (2) filed before November
29, 2000, and had a request for publication.
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