Pay up for the 21st Century Strategic Plan

Last summer, Jim Rogan, head of the US Patent and Trademark Office (USPTO), unveiled its aggressive 21st Century Strategic Plan to transform the USPTO from a slow-moving government bureaucracy into a quality-focused, responsive, market-driven intellectual property system. Now, there is much discussion over the cost of the plan, as it calls for substantial fee increases (subject to congressional approval). For large entities seeking patents, the cost would jump from $8,020 to $12,110, for small entities, from $4,010 to $6,680. A new category of 'micro' patent seekers (an individual, rather than a company) would pay $6,180. According to the American Bar Association, one of the concerns with the proposed price hikes is that Congress will divert the income produced by the fees away from the patent office budget, leaving the USPTO no better off to implement the goals of the Strategic Plan. Rogan wants to use the extra funding to double the size of the examiner staff (currently 3,500), as it now takes over two years to get a patent, and without significant change in operations, the time will soon grow to three years. Currently, the USPTO have 408,000 older applications on the shelf and expect 340,000 new applications this year. WEB SITE United States patent database-21st Century Strategic Plan

No speculation in application

The decision by the UK patent office in 1999 to turn down four patent applications on behalf of Dr Kenneth Prendergast is now looking like quite a significant one. The patents concerned new uses for the potent 5HT serotonin inhibitors, ordansetron and granisetron, currently used for treating nausea associated with chemo- and radiotherapy. The patent examiner held that the claimed new therapeutic uses, including combatting stress in civilian and military emergency situations, and treating neurological symptoms and nausea associated with chemical or biological warfare, were not supported by any pharmacological data at the time. The UK patent office declared that it is incumbent on applicants in these cases to illustrate that the compound actually shows the claimed activity, and that the demonstration must be by in vivo or in vitro test data obtained prior to the patent filing date. Furthermore, the new activity cannot be ascertained by an obvious inference from existing data, or prior art. This case, together with the recent decision by the European Patent Office to revoke an ICOS patent covering DNA sequence information that lacked working examples of function and utility (see Patent Watch, December 2002, Accurate speculation is not enough), seems to be establishing an important precedent: speculation will not get you a patent in Europe, regardless of whether that speculation turns out to be correct. WEB SITE The UK Patent OfficeThe UK Patent Office