It’s about to get a lot more expensive to be a Connecticut inventor, thanks to new rules at the U.S. Patent Office that go into effect this week.
In an effort to clear up the 750,000 backlog of pending applications, new rules starting Nov. 1 shift more burdens — and cost — on applicants. Some companies will simply go ahead and spend more up front on applications. But others who are unwilling or unable to comply may forgo patenting altogether and just try to keep their ideas hushed up.
“People have been dreading [the changes] now for about a year,” said Leah Reimer, an intellectual property attorney at Cantor Colburn in Bloomfield. “It’s a problem for everybody.”
Guessing Right
The patent office is changing a number of aspects of the process, but a limit on the number of claims has drawn particular ire from some intellectual property attorneys and Connecticut businesses in innovative research areas such as health care, bioengineering and nanotechnology.
Previously, an applicant could list an unlimited number of uses, or claims — the new rules limit claims to 25.
Reimer said attorneys historically urge clients to list every possible use in their application. With new limits in place, clients will have to spend much more time and money to determine what elements of the invention are the most important to protect.
But that question can only be fully answered once the invention has been out on the market for a while. If a company emphasized protection of the wrong aspect of the invention, it might find itself losing out when another element proves more important down the road.
“You have to have a crystal ball, in a sense, to know what will be important 10 years from now,” she said.
Gualberto Ruano, president of Hartford-based Genomas, said the new rules will create many more complications for any patents the company makes in the future.
Better Planning
Genomas is a biomedical company in partnership with Hartford Hospital. It markets devices that help physicians predict drug side effects for individual patients based on that patient’s DNA. The products incorporate the patient’s DNA markers, a mathematical algorithm to predict the likelihood of a side effect’s occurrence and a user system that allows doctors to access the information.
It’s complex stuff, and it has a lot of components to it. Those types of systems require lengthy claims, he said, and the new law will mean much more work for the company when it goes to patent ideas in the future.
Ruano said the new law has some positives: the limit will require businesses to be much more thoughtful and better-researched about their invention and its uses. It’ll cost more, which will make companies more careful about what to invest in.
“If it’s going to cost you $50 grand [to patent something], it had better be worth it,” he said. “The days of a $5,000-$10,000 patent are gone.”
If it’s a complicated invention that requires more than 25 claims, the applicant has to file an Examination Support Document that exhaustively details the research regarding the patentability of each claim, among other things.
“It’s going to significantly increase the cost,” said John Linderman, managing partner at McCormick, Paulding and Huber in Hartford. Linderman also pointed out another new feature that could create problems: After the new law kicks in, an application can be refiled only two times.
When a patent is rejected, the patent office will point out any problems with the applicant’s claim, and the applicant can make adjustments and re-submit. Linderman admits that most issues can be resolved after two go-rounds, but sometimes the office doesn’t fully flesh out issues in two examinations. That will leave some applicants with no choice but to go through an appeals process to get the application re-examined.
Doing Without
But the higher costs associated with new application laws might prompt more companies to forego patents altogether. Patents are supposed to protect an idea, but patenting also puts that invention or process out there publicly, where competitors can steal it, tweak it slightly, and duck any legally-actionable infringements. It’s easier, sometimes, just to keep ideas secret.
Reimer of Cantor Colburn doesn’t like that idea. The new laws will likely convince some inventors to keep their inventions, methods or processes quiet, and that stifles the free flow of ideas. It’s not healthy for innovation in general, she said, but the law removes some of the incentive to go public with ideas.
“It’s just another reason to keep quiet,” she said.
