Gary Griswold of 3M has a modest request for the U.S. Patent and Trademark Office. “Our desire is to have valid patents issued promptly in a cost-efficient manner,” says Griswold, president and chief intellectual property counsel of 3M Innovative Properties Company in Oakdale, and a national board member of the Intellectual Property Owners Association.
But “prompt” is the last word that Griswold would apply to the patent-application process, and he is roundly seconded by Twin Cities attorneys concerned with intellectual property issues. As for validity—by which attorneys mean the issuance to their clients of patents that can stand up to challenges, and the denial of competitors’ applications for patents that might cause their clients unjustified grief—opinions are mixed regarding the Patent and Trademark Office’s (PTO’s) scorecard in that area.
"We have launched products not knowing if we'll get patent protection," says Imation Corporation's Eric Levinson.
Prompt? As of September, the average pendency period for a patent application—meaning the time that elapses between filing and issuance—stood at 30 months, or 2.5 years, Griswold says, citing PTO figures. In some markets, such as high-tech, pendencies average more than three years—and PTO director Jon Dudas has warned that those periods could double by 2008 unless significant changes are made.
Twin Cities attorneys say it is not uncommon for two years to pass before an application receives even an initial response from a PTO examiner, known as a first office action. After that first action, more years can pass in arguing and negotiating with examiners before a final ruling is made.
