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Patent Delays Are Up, But There Are Ways to Ease the Slog

July 9, 2024
While the process has become more complicated and the backlog bigger, free programs are available to help.

Innovation in the mechanical and industrial space tends to be more incremental than elsewhere (compared, for example, to the electrical space), but it is dynamic and constantly evolving. Manufacturers aiming to obtain patent protection for their innovations in these areas should be aware of several recent developments, some of them positive and others challenging to navigate.

First, in recent years, the number of patent applications related to additive manufacturing has increased significantly, encompassing improved component design, manufacturing processes and equipment. A September 2023 report by the European Patent Office revealed that between 2013 and 2020, international additive-manufacturing technology patent applications grew at an average annual rate of 26.3%. For all other technologies, the average growth rate was 3.3%.  

Growth was particularly pronounced in the medical and transportation sectors—where companies have used additive manufacturing to print patient-specific implants and prosthetics—and aircraft parts, including turbine blades, fuel nozzles and air foils. 

Second, we have observed a significant increase in the number of patent applications directed to clean-tech and renewable technologies. In 2021, the last year for which comprehensive data is available, the U.S. Patent and Trademark Office (USPTO) received approximately 40,000 patent applications directed to clean-tech technologies (which is equal to about 7% of total applications filed with the USPTO). And according to research available from the WIPO (the United Nations’ World Intellectual Property Organization) and the law firm Mathys & Squire, we know that:

Patent applications for renewable energy – which includes solar power, fuel cells, wind energy and geothermal technologies – increased by almost 30% during the 17-year span between 2002 and 2019.

Patent applications for carbon capture and storage technologies – which reverse the negative effects of carbon emissions – are up 65% between 2020 and 2022.

Patent applications for electric vehicles are up 59% between 2020 and 2022.

We have also observed increased patent application filings for environmentally friendly product packaging, energy storage technologies (most notably electric vehicle batteries), climate and environmentally friendly agriculture, resource management, carbon reuse and recycling and green materials.

Free Programs to Help

With such innovation on the rise, both U.S. and European patent offices report a significant backlog of patent applications waiting to be examined. Evidence from the USPTO, for example, demonstrates that a buildup of patent applications began around 2020 and has been slowly increasing. While not all of those are related to cleantech technologies, given the United States’ emphasis on encouraging innovation that seeks to improve climate change, the USPTO is making it easier for individuals and companies to do what they can to reduce greenhouse gas emissions.

To encourage cleantech filings, the USPTO introduced its Climate Change Mitigation Pilot Program. This program, in effect until 2027, allows patent applicants to expedite—at no cost—the examination of their U.S. patent applications for technologies that arguably address climate change.

We recently made use of the program to expedite a patent application related to energy reduction. We filed in May 2023, and within just two months, the USPTO examined the application and issued a positive response, advancing all of the claims to allowance. We expect that the U.S. patent will be issued later this month, just five months after filing—a process that typically takes at least two or three years.

In support of the CHIPS Act of 2022 and an executive order issued by President Biden, the USPTO recently introduced its free Semiconductor Technology Pilot Program, which allows patent applicants to expedite the examination of their U.S. patent application for semiconductor devices. The program lapses on December 2, 2024, or upon receipt of 1,000 qualifying applications, whichever occurs earlier.

Another free pilot program offered by the USPTO, the First-Time Filer Expedited Examination Pilot Program, expedites the examination of patent applications filed by first-time inventors.

The USPTO’s After Final Consideration Pilot (AFCP) Program is a great opportunity for patent applicants. The program gives USPTO examiners more time to review responses to final rejections of patent applications. This can help to get a patent approved without needing to file Requests for Continued Examination, which are expensive and can slow down the process of getting a U.S. patent. 

Holding Back

In other ways, however, obtaining a U.S. patent from the USPTO has become more complicated. In 2014, the U.S. Supreme Court issued a decision invalidating a patent for a computer-implemented electronic escrow service as being an “abstract idea” not eligible for patent protection.

Initially, the decision only hurt electrical and computer-related patent applications and patents, particularly those directed to business methods (such as e-commerce, insurance, banking and tax). But courts have recently begun expanding the decision to mechanical and industrial technologies.

Over the last two years, courts have invalidated patent claims for manufacturing a drive shaft and polycrystalline diamond compacts primarily used in drill bits, mainly because those patents allegedly lacked essential details about “how” the claimed inventions achieved their intended results.

In 2023, a court invalidated patent claims for the automatic transfer of data contained in a design model (such as a CAD model) to a machine (a 3D printer, for example) to manufacture the object based on the transferred data. The court found the patent claim focused on what it considered to be the “abstract idea” of “extracting and transferring information from a design file to a manufacturing machine,” something performable by a human operator and therefore not eligible for patent protection.

New Legislation

Many had hoped that by now, the U.S. Supreme Court and Congress would have changed or clarified what constitutes an “abstract idea” that renders claims ineligible for patent protection.

But there is evidence of progress, particularly on the Congressional front. In June 2023, Sen. Thom Thills (R – N.C.) introduced the Patent Eligibility Restoration Act (PERA) of 2023, which is now co-sponsored by Sen. Chris Coons (D – Del.). It would overturn the U.S. Supreme Court’s above-discussed 2014 decision and would explicitly delineate a list of exceptions to patent eligibility. The Senate Judiciary Committee’s Subcommittee on Intellectual Property met earlier this month to discuss the legislation. Most of the witnesses attending that hearing, including a former director of the USPTO, spoke in favor of the bill—and many in the industry, though not all, are optimistic that the PERA will pass soon.

Share the Details

In the meantime, innovators should ensure that their patent applications include sufficient detail about “how” their invention works, mainly if the heart of the invention utilizes a computer.

For example, a patent application directed to a 3D printer that more quickly prints parts should describe how that 3D printer can do so. Moreover, innovators should, where possible, discuss any technical information about their invention(s) and any technological improvements that their invention(s) may yield.

In conclusion, there are many reasons to be hopeful about the development of innovations in mechanical engineering. New technologies are being created at rapid levels, and as a result, the USPTO is responding with unique, free programs that help innovators expedite their patent applications. While there needs to be more clarity from the Supreme Court or Congress about what is patentable in these technologies, there’s no reason to slow the innovation train. 

Ryan J. Schermerhorn is a partner and registered patent attorney with the intellectual property law firm Marshall, Gerstein & Borun LLP.

About the Author

Ryan J. Schermerhorn | Partner and Registered Patent Attorney, Marshall, Gerstein & Borun LLP

Ryan J. Schermerhorn is a partner and registered patent attorney with the intellectual property law firm Marshall, Gerstein & Borun LLP

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