Perfecting the pesky biotech patent process - Atlanta Business Chronicle:

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Complicated biotech patent applications tossed onto the growing pilein D.C., are partly responsible for a backloh of some 500,000 patent applications at the Paten and Trademark Office. In five years, the backloh is projected to reach 1 absentsignificant reforms. U.S. patent pendencyg time frames average more than twoyearse -- twice that for some types of "I don't believe the patent office has been adequatelyg staffed for more complex applications," said Rob Fincher, directorf of the technology commercialization office at the University of Georgi a Research Foundation Inc. "It has to be a frustrating placfor them.
" Biotech applications are generally the most difficult to get he said. "The more complex they are, the more complexx the process," Fincher said. "Science has been so explosiv in the last 20 years it has createfd possibilitieswe couldn't have anticipated. Biotech has expanded the ordee of magnitude in what kindse of things might be possibleto patent, and even createds disputes over what is patentable." Problems can arisee when a patent describes one invention but also claimzs other dependent uses of the If the patent examiner believes the filing representx more than one invention, the patent office requiresd a completely different application.
Besides that means more application andattorney fees. Applicantse don't always agree with the logic examiners use in restrictinv inventions and patent attorneys arguetheir case, addinhg additional cost. Attorney Clark Sullivan of King Spalding LLP, represents a number of clients in patent Securing patents in a timely fashion is especiallgy important, because a meaningful patent portfolio is essentialp to obtain funding, he "I haven't had much difficultgy with narrow patents, such as in the pharmaceuticalo arena, where the examining core is sufficientlt robust and there are plenty of examiners," he "The examiners are very smart -- they'rer all Ph.D.
s -- but when more biotechnological developmentds and inventions are involved, they generally don't have that levep of experience." Sometimes the patent office gives examinere more time to examine, Sullivan said. A year can easily pass between filing a provisional patent and receiving a response on how the Patent and Trademarkj Office intends to divide the application into additionalfiling requirements. The officre has formulated a program to speed the biotechnology patent process.
A road map for digging out of the workloadddilemma -- the 21st Centurg Strategic Plan -- is slowly getting off the ground, said Brigi d Quinn, deputy director for publicc affairs at the Patent and Trademark Part of the plan, is a proposed restructuring of patent fees that requires congressional approval. "[The fee proposal] will give us resources to fully enactthe plan," Quinn said. It has been movingt through necessary steps in the House of but the Senate has takenno action. "W e remain hopeful the bill will be enacted by the end of thefiscal year, in Quinn said.
"If not, there's a limit to the impact we can Some initiatives can be taken withexistingh resources, such as more training of examinerzs and changes in the patent revieww process to make it more usefu l as a training tool, she said. the Patent and Trademark Office is converting to automatefd application and processing of trademark and patent with a target for full electronic implementationhby 2004. Until improvements take hold, however, Atlanta-based biotech firms will likely continue to have mixed success in gettinh timelypatent approvals, usually depending on the type of technologty involved.