USPTO Options for Applicants to Obtain a Patent More Quickly
Posted on Jun 29, 2016 in Articles
This article originally appeared in The Legal Intelligencer on June 17, 2016.
The average length of time needed to obtain a U.S. patent is about two-and-a-half years. Some applicants, however, want their patents faster. Perhaps a competitor is already in the target market, and the patent applicant wants to initiate an infringement lawsuit as soon as possible. Maybe an entrepreneur’s funding is contingent on receiving the patent grant. Perhaps the issued patent is important for cross-licensing. Possibly the patent grant is valuable for defensive purposes.
There are many reasons why an applicant might want their patent to be granted faster. Fortunately, the U.S. Patent and Trademark Office (USPTO) offers a variety of options for patent applicants to obtain patents more quickly.
As the USPTO states, “Thousands of applicants have used track one already. Join them on the prioritized examination fast track!”
By properly filing a track one petition, examination of a patent application will be significantly expedited. The USPTO does not guarantee how fast a patent application will be processed using track one, but the goal is to reach final disposition (i.e., final rejection, notice of abandonment, or notice of allowance) within 12 months. Through April 2016, the USPTO reports that the average time to reach final disposition for applications in the track one program is six-and-a-half months. Track one petitions are granted an average of 1.4 months after they are filed and communications from USPTO examiners (called first office actions) are issued within about two months from petition grant. The program seems to be working extremely well.
The procedure for filing a track one petition is relatively simple, but the filing fee is not cheap. The current fee to participate in this program is set at $4,000 ($2,000 for the discounted small entity rate). Yet, some studies have shown that applications being examined within this program are often allowed with less “back and forth” between the USPTO and the applicant; therefore prosecution cost savings may be possible by participating in this program.
FIRST ACTION INTERVIEW
This is a “pilot program,” meaning the USPTO is trying this program on an experimental basis and will decide whether it should be maintained. So far the program has had good results.
The program is available for any utility patent application that has not received a first office action, claims only one invention, and has a limited number of claims. The examiner conducts a search to determine if the applicant’s claims are patentable, allows the application if all claims are allowable, and issues a pre-interview communication if the claims are not patentable. The pre-interview communication explains (in abbreviated form) the examiner’s rejections. The applicant then has 30 days (with a 30-day extension available) to respond. The response can include either: a request to interview the examiner with a proposed amendment, or a request to not interview the examiner along with a written response/amendment. If the interview produces an agreement on allowability, then the examiner can perform an updated patentability search and allow the application.
USPTO statistics for April show that applications that were part of the first action interview program were allowed by “first action” (i.e., allowed without any rejections) 29.5 percent of the time, while applications not part of the program were allowed by “first action” 12 percent of the time. Therefore, there may be advantages to participating in this program.
PATENT PROSECUTION HIGHWAY
This program is helpful if a patent application has been filed in both the United States and a foreign country that is a participant in the Patent Prosecution Highway (PPH) program, and at least one claim is allowed in that foreign country before U.S. examination begins. A U.S. applicant can then file a petition for accelerated examination under PPH and examination in the United States will proceed on an expedited basis. The petition must include the foreign examination results, which the U.S. examiner will use to assist with the search.
Over 30 countries participate in the PPH program and the program works in reverse, as well (i.e., a PPH petition may be filed in a foreign country for expedited examination based on claim allowance in the United States).
PETITION TO MAKE SPECIAL
The USPTO offers many other bases for requesting expedited examination of a patent application. Applications that are approved, following what is called a petition to make special, are examined sooner than usual.
A petition to make special based on applicant’s health will be granted if the applicant’s health is such that he or she might not be available during the prosecution of the application. A doctor’s certificate is required. The petition and supporting documentation normally becomes part of the public record (unless an expungement procedure is used).
A petition to make special based on age may be filed if the applicant is 65 years or older. Evidence (such as a birth certificate or a passport) must be provided.
A petition to make special on other bases also exists including:
- Inventions that enhance the quality of the environment.
- Inventions that contribute to the development or conservation of energy resources.
- Inventions that contribute to countering terrorism.
- A manufacturer is ready to begin or increase production as soon as the patent is granted.
- Infringement is taking place.
- Inventions relating to recombinant DNA.
- Inventions relating to superconductive materials.
- Inventions relating to HIV/AIDS and cancer.
- Biotechnology applications filed by small entities.
This option allows an applicant to obtain faster examination by submitting an accelerated examination support document. Because of the potential estoppel created by this document, attorneys may advise applicants to not participate in this program.
The support document must include an information disclosure statement that identifies references material to the patentability of the claims. Also required is an identification of every claim limitation that is disclosed by each reference and where the limitation is disclosed. A detailed explanation of how each of the claims is patentable over the references must also be included. The utility of the invention as defined in each claim must be specified and support for each claim limitation from the patent specification must be included.
Attorneys worry about submitting these types of documents because their content can be construed as limitations on the scope of claims in the issued patent. Therefore, this option is not popular.
Patent prosecution requires the execution of multiple strategies in order to obtain the best outcome possible. The various options for expedited examination are often helpful for assisting patent owners to maximize the value of their intellectual property.
– by Lawrence E. Ashery