This interview with Seth Ostrow, of Ostrow Kaufman LLP, is based on a real story: TaKaDu, which is just about to end its second year of operation, has entered the allowance phase for its first patent, a cleantech patent, and will probably get it soon. TaKaDu didn’t apply for the patent the moment it was incorporated, nor did it get an application transferred. Actually, TaKaDu applied for the patent, a water loss prevention technology for water utilities,less than a year ago. How is that possible?
To get the answer to this question, refute some conventional wisdom about patent applications, and specifically applying for a patent in the cleantech area, and hopefully provide insight to other companies that are breaking ground in cleantech, I had a telephone interview with Seth Ostrow. Ostrow is TaKaDu’s patent attorney. Ostrow’s firm is located in the Chrysler building, a fact that all TaKaDu-folk mentioned with awe. They didn’t just go to New York to get our patent through; they managed to get into the spire of one of New York’s finest buildings and a great art deco architectural achievement.
Q: How long do patent applications typically take before a patent is granted?
A: The patent office has areas of specialization, so it depends on the patent you’re filing. For instance, a simple mechanical device can take a year. But software and telecommunications patents can take much longer, with 3-4 years as the norm. It is a function of the number of patent applications and the number of examiners, and other factors. Sometimes patent review begins only after 3 years have gone by.
Q: What about expediting applications?
A: The ability to expedite patent applications has been around for many years. The process involves writing a petition to have the patent application expedited. There are several grounds for that, such as an old or terminally ill inventor, or a patent that can cure disease, is anti-terror or, in the case of cleantech, is good for the environment.
The problem is that historically, too many patent applicants attempted to go down the expedition path, slowing down the expedited path and making that take longer, as much as 2 years in many cases.
Q: So what has changed?
A: The rules for expediting patent applications were tightened over the past couple of years since too many applicants were using them. At the same time the Patent Office made it harder to expedite applications, it also made it more beneficial to do so, by adding a requirement on patent examiners to work issues out with applicants by phone rather than through lengthy back and forth written communications. Instead of getting an “Office Action” letter from the Patent Office, you get a phone call from the examiner, and you can resolve many of their issues much more effectively than with letter writing.
In addition, the Patent Office now requires expedited applications to do the prior art search in advance if they want the expedition, and write a detailed memo about it, as well as do the necessary restrictions. This has raised the bar considerably, but also means that a lot of the work needs to be done in advance, work that typically companies expected the patent examiner to do.
In sum, the tightening of the rules made it more difficult to expedite but the rewards, including the ability to converse with the examiner, are greater.
Q: So do you expect all patent applications to get approved in less than a year, 6 months, as in the case of TaKaDu’s Patent?
A: I can’t recall any patent application happening this quickly. Historically, we did have patent applications expedited, got a patent in perhaps 18 months, but this is the fastest I’ve seen, no doubt. However, if applicants are serious about expediting their applications and have the proper conditions in place, I believe a comparable speed could be achieved.
Q: What were the conditions, beside the expedition?
A: The expedition helped, of course. But you also need to see that the invention is really good and that makes things go much faster with the examiner. Making the examiner see that this is a good invention and that it really makes a difference in preventing water loss certainly had an impact. The fact that the industry seems to be accepting the smart water grid vision also has an impact, I believe.
Another key take-away is that TaKaDu invested its time and money in researching the prior art. As a result TaKaDu was aware of the prior art, and the examiner didn’t discover anything we were not aware of. Many applicants tend to take the opposite approach – that it is the examiner’s job to find prior art, and not their job. So when the examiner called to discuss prior art, we could rapidly respond and address any concerns he had.
Q: So will you be promising 6 month patent approvals?
A: No promises. This case had all the stars aligned and most companies, and especially startups, don’t take the time to learn about patent applications the way TaKaDu did, they just want to get something on file.
But it does show that patents don’t have to take long, and that in the case of cleantech patents, you can do the work in less than a year.