Patent office overwhelmed by bio-inventions
New rules would limit follow-on additions to patent claims
San Francisco Business Times - May 26, 2006
by Eric Young
Increasing backlogs at the U.S. Patent Office are a longstanding frustration for biotech executives.
But they said a new set of proposals meant to reduce the waiting time will not provide much relief.
New rules under consideration would allow just one follow-on to a pending application. A subsequent application would have to explain why it was not submitted previously. Historically, the Patent Office has not placed limits on these filings.
A second, related proposal would limit an application to 10 claims, which are statements describing the heart of the invention. Many applications have traditionally had at least 20 claims.
Officials at the U.S. Patent and Trademark Office in Alexandria, Va., said the proposals are designed to cut the number of patent applications waiting to be reviewed by examiner. They agreed that the system must be fixed. Almost one-third of new applications in 2004 were for inventions that already had been reviewed by the Patent Office.
Some applications even had claims that patent examiners had previously rejected. While some resubmissions are necessary, patent officials said, the time it takes to address them detracts from the agency's ability to examine new patent applications.
The backlog, which has increased in recent years, frustrates biotech companies, which tend to be frequent filers of complex and lengthy applications.
The backlogs are an increasingly serious issue for biotechs. It can take patent examiners up to 15 months to begin reviewing an organic chemistry patent application. It can take more than three years to get a drug application to a patent examiner. Once a review has begun, the Patent Office can take several more years to grant a patent.
