Where Are Our Patents?! Ten Tips for Speeding Up Patent Prosecution

December 12, 2010

Rabbit vs Tortoise

It has become a familiar scenario: your early stage company has invested heavily in the preparation and prosecution of patent applications.  After years of waiting, none of your applications have issued into patents.  You are diligently working to raise your next round of funding.  Potential investors want to know: where are your patents?  You’re not sure what to tell them.

You are not alone.  As can be seen from the cumulative frequency chart below, the median pendency of U.S. patent applications has now almost reached four years.  About 80% of patents issue between two and six years from when they were filed.

Cumlative Freq Chart Patent App Pendency

Source: http://www.patentlyo.com/patent/2010/04/average-pendancy-of-utility-patents-issued-april-27-2010claim-priority-to-foreign-applicationyesnoclaim-priority-to-us-no.html

There are about 1.2 million applications currently pending at the U.S. Patent and Trademark Office (USPTO).  Of these, about 750,000 are awaiting an initial review by a patent examiner.  Most of the pendency time of a patent application typically is spent in queue at the Patent Office, waiting for an examiner to first pick up the application and issue a first office action.  What can applicants do to reduce this long pendency time?  Programs have been implemented at the USPTO and other patent offices around the world for allowing certain applications to be advanced out of turn for examination and reviewed more quickly.  The following is a summary of ten key programs.

Accelerated Examination Program

An applicant may have an application granted accelerated examination status provided certain conditions are met. Key requirements include: (1) the application must be filed electronically and with a petition to “make special” along with a petition fee of $130; (2) the application must contain three or fewer independent claims and twenty or fewer total claims; (3) the claims must be directed to a single invention; (4) the petition must include a statement agreeing to have an interview; (5) the applicant must provide a statement that a pre-examination search was conducted that meets certain requirements; and (6) the applicant must provide an accelerated examination support document that satisfies certain requirements. One of the things this support document must do is specifically point out how the invention is patentable over the prior art found in the pre-examination search.  The pros and cons of using this program should be carefully considered with your patent attorney.

The USPTO states that its goal is to complete examination of an application in this program within 12 months from the filing date of the application. Applications are placed on an accelerated examination track throughout the entire prosecution in the USPTO.

Project Exchange

This pilot program allows an applicant having multiple applications pending before the USPTO to have an application accorded accelerated examination status if the applicant expressly abandons another copending unexamined application.  In order to receive accelerated treatment, applicants must file a petition for accelerated examination. Some of the key requirements include: (1) the non-provisional application for which accelerated status is sought must be filed before October 1, 2009; (2) the applicant has another co-pending non-provisional application that has an actual filing date earlier than October 1, 2009, and is complete; (3) the application for which accelerated status is sought and the other co-pending application either are owned by the same party as of October 1, 2009, or name at least one inventor in common; and (4) the applicant files a letter of express abandonment in the copending application before it has been taken up for examination.

No Examination Support Document or petition fees are required for this program.  The expiration date for this pilot program has recently been extended to the end of 2011, or when 10,000 applications have been granted accelerated status under this program, whichever is earlier.

Applications will be placed on an accelerated examination track in the following situations: (1) prior to the first communication on merits, i.e., first Office action; (2) any appeal to the Board of Patent Appeals and Interferences; and (3) the patent publication process.

Applicant’s Age or Health

Applications may be accorded accelerated examination status based on an applicant’s age or health.  Key requirements include a petition with accompanying evidence showing that (1) the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate or (2) that the applicant is 65 years of age or older.

Green Technology Pilot Program

The Green Technology Pilot Program permits applicants to petition for accelerated examination for applications pertaining to clean technologies, such as environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reductions.  Some key requirements include: (1) the application must contain three or fewer independent claims and twenty or fewer total claims; (2) the claims must be directed to a single invention that materially enhances the quality of the environment; (3) the petition must include a statement explaining how the materiality standard is met if it is not clear on its face from the application disclosure; (4) the petition must be filed electronically; and (5) the petition must be accompanied by a request for early publication and the publication fee.

PACE Program in Europe

The European Patent Office offers an accelerated prosecution program with few limitations and no additional fees.  An accelerated search, examination, or both may be requested.

Patent Prosecution Highway

Under the Patent Prosecution Highway, an applicant receiving a ruling from an Office of First Filing that at least one claim in an application is patentable, may request that an Office of Second Filing fast track the examination of corresponding claims in a corresponding application. The Patent Prosecution Highway leverages fast-track examination procedures already available in the Office of Second Filing to allow applicants to obtain corresponding patents faster and more efficiently.  The USPTO has Patent Prosecution Highway agreements with various Intellectual Property Offices around the world, including Australia, Austria, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Russia, Singapore, Spain and the United Kingdom.

Peer Review Pilot Program

The USPTO initially began this program in 2007 to determine the extent to which the organized submission of documents together with comments by the public would be useful to examiners during the examination process.   Such collaboration has been found to effectively locate prior art that might not otherwise be located by the USPTO during the typical patent examination process.   The USPTO in cooperation with the New York Law School’s Center for Patent Innovations launched a new 1-year pilot program in October, 2010.

Some of the benefits of the pilot program include: (1) an application in the program will be advanced out of turn for examination and reviewed earlier (accorded special status similar to applications in the Green Technology Pilot Program above); (2) no petition fee is required; (3) having the published application posted on the Peer To Patent Web site, volunteer scientific and technical experts will be able to discuss the application and submit prior art through the Peer To Patent program,  thereby contributing to the quality of any patent resulting from the published application; (4) additional relevant prior art references may be made of record and considered by the examiner at an early stage of examination; and (5) the prior art references cited under the pilot will be printed on any patent issuing from the application that participated in the pilot program.

First-Action Interview Pilot Program

Under the expanded program, participants are permitted to conduct an interview with the examiner after reviewing a Pre-Interview Communication providing the results of a prior art search conducted by the examiner. Participants in the program experience benefits such as: (1) the ability to advance prosecution of an application; (2) enhanced interaction between applicant and the examiner; (3) the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and (4) the opportunity to facilitate possible early allowance.

The pilot has been expanded but is still limited to applications in certain art units in the Technology Centers.  Any request for the pilot program must be filed before April 1, 2011.

Pre-appeal brief conference

This program offers applicants the option of requesting that a panel of examiners formally review the legal and factual basis of the rejections in the application prior to the filing of an appeal brief. The program is intended to spare applicants the added time and expense of preparing an appeal brief if a panel review determines an application is not in condition for appeal.  The conference is an internal meeting between examiners and does not include the applicant. Rather, the applicant submits a short memo, five pages maximum, that is reviewed at the conference. The goals of the program are (1) to identify the presence or absence of clearly improper rejections based upon error(s) in facts, or (2) to identify the omission or presence of essential elements required to establish a prima facie rejection.

Three-Track Proposal

The Three-Track program is a proposal which may be implemented at the USPTO sometime in 2011.  The proposed program would permit applicants to choose one of three “tracks” for patent examination. This program would provide applicants with greater control over the timing of examination and increase the efficiency of examination by avoiding or reducing duplication of efforts by the Office of First Filing and the USPTO. Track I (accelerated examination) Applicants who submit a request and pay an additional fee will have their application placed in an accelerated queue for examination. Applicants would expect to receive a first Office action on the merits within 4 months. Final disposal (allowance or final rejection) would be expected to occur within 12 months of accelerated status being granted. Track II (standard or traditional timing for examination) This option will involve standard fees and will proceed under current examination procedures. Track III (applicant controlled up to 30 months queue prior to docketing for examination) Non-continuing applications that originate in the United States may have examination delayed for up to 30 months.

Conclusion

All of the above programs have been developed to speed up the patent application process.  The above descriptions, however, are simplified summaries of the current programs.  Each of these programs has a series of significant restrictions that limit their applications to specific circumstances.   Many of these restrictions continue to be frequently modified.

Other strategies should also be employed to keep patent prosecution as compact as possible. As always, applicants should utilize interviews with examiners, either in person or by phone, to identify and reach resolution of disputed issues more quickly.  Extensions of time to respond to office actions should be avoided, as they delay the issuance of a patent and can shorten any Patent Term Adjustment that may be applied to the patent. When possible, provisional applications should be followed up with non-provisional applications before the end of the allowed twelve month period, to start the examination of the application sooner.  Narrow claims may be pursued first in order to obtain an issued patent as quickly as possible.  Broader claim coverage may then be pursued in continuation applications.

Using the above programs and strategies, prosecution times for patent applications may be shortened as the USPTO works to reduce its large application backlog.

(Opinions expressed in this brief are solely those of the author. Nothing herein should be construed as legal advice.)

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