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Delaying the Process of Getting a Patent

Posted on Feb 22, 2017 in Articles

This article originally appeared in The Legal Intelligencer on February 21, 2017.

At the end of the Gulf War, ­international inspectors searching through an Iraqi military site found a U.S. patent that explained how to manufacture nuclear material for an atomic bomb. The patent, U.S. 2,709,222, had been delayed from being granted for years. But in 1955 the U.S. government allowed the patent to issue, believing that its ­methodology was out of date, and no country would be interested in its contents. Evidently they were wrong.

While a U.S. patent that explains how to make an atomic bomb is unusual, delaying the granting of a patent is something that occurs all the time. Preventing countries from building nuclear missiles is a serious national security issue. For most delays, however, the reasons are more likely to be business-related.

Why would someone want to slow down the speed with which their patent is issued? Some applicants desire to receive their patents as quickly as possible. For them, the patent office offers the option to pay a fee (up to $4,000) for expedited processing. For others, the opposite is desired. Some applicants simply do not have the funds that are necessary to procure patent protection. This is particularly common when a new company is being created and cash is in short supply. Entrepreneurs understand that it is important to file for patent ­protection as soon as possible, yet the costs to obtain valuable patent protection can be ­significant. If foreign protection is desired, costs can be even higher, with prices to file a patent application in a foreign country ranging between $4,000 and $10,000. In other situations, businesses may be ready to file patent applications, but they may not have a good understanding of the value of the invention they seek to protect. While an idea may look good on paper, there may need to be many months of research, trial and error, marketing, advertising, and brand building before it is known whether an ­invention has commercial value. In such situations, ­companies seek to defer the process of patent procurement as they ­determine whether it makes financial sense to proceed. If an idea has no commercial value, spending money on its patent protection may be wasteful.

One of the simplest strategies for ­delaying patent procurement and the related expenses is to file a provisional patent application. These applications have few formal ­requirements, and the filing fees are low (currently $130 when filed on behalf of a small company). Provisional patent applications are not examined by the U.S. Patent and Trademark Office (USPTO). Instead, a nonprovisional application may be filed within one year of the provisional application filing, and information shared by the two ­applications receives the benefit of the provisional ­application ­filing date. In contrast with provisional applications, nonprovisional applications must include claims, and after being filed are subject to examination, possible rejection and potential allowance along with subsequent patent grant. Thus, when a company is not sure whether they wish to proceed with patent protection, a provisional application might be a good strategy. Postponing much of the costs of obtaining a patent by the one year afforded by a provisional application may be economically desirable.

Provisional patent applications, however, are not without their risks. To be of value, a provisional application needs to include all of the information that will eventually be required to obtain a patent. When a subsequent nonprovisional patent application is filed, it will receive the benefit of the ­filing date of the provisional application, but only to the extent that the provisional application completely and accurately discloses the invention to be protected. For this reason, provisional applications must be drafted with care to ensure that their technical disclosures are complete.

Another way to delay the cost of ­patent procurement, particularly when international patent protection is desired, is to file a patent application under the Patent Cooperation Treaty (PCT). A country that is a signatory to the treaty (and that meets certain conditions) performs an initial “search” of the claimed invention, and publishes a “report” that identifies patent documents (and other publications) that may determine the invention’s patentability. Within 30 months of a PCT application ­filing date, the applicant must enter the individual countries in which patent protection is desired. The ability to defer that decision can be highly beneficial from a cost ­perspective. With translations alone averaging between $4,000 and $8,000, per patent application and per country, expenses can easily skyrocket.

A third option, available when seeking to delay pursuing patent protection outside of the United States, is to defer requesting examination in individual countries. While patent applications can be filed in any country in the world, some countries will not begin the examination process until a fee is paid and examination is requested. In some countries, for example, a request for examination need not be filed for several years. In a country in which examination must be requested, not only is it possible to defer the cost of examination, but an applicant can see how a patent application is progressing in one country before deciding whether to make further investment in other countries.

The United States does not offer the ­ability to delay the payment of examination fees (generally speaking). Numerous ­options are available, however, for requesting the USPTO to suspend action on a patent application once the fees are paid. For example, a petition can be filed which, if accompanied by acceptable reasons, will permit a patent applicant to delay the examination of an application for up to three years. Also, at certain stages of prosecution, it is possible to automatically request suspension for a six-month period of time.

The USPTO also has the ability to ­unilaterally suspend prosecution or delay patent grants. The patent described at the beginning of this article (for producing ­nuclear bomb material) is one such ­example. Other patent applications have been ­subject to such a delay, but because such ­applications are classified, it is unknown to the general public how many exist.

Patent procurement can be extremely expensive, but it is important to realize that the process of obtaining patent protection is an investment in a company’s future. Not all investments are sound, however. Thus it may be desirable to delay the ­patenting process until it is known whether the costs associated with patent protection are ­justified.

– by Lawrence Ashery

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