Authors: Dan Altman, Partner and Vlad Teplitskiy, Partner, Knobbe Martens, Orange County, California
Introduction
Imagine that that your company is getting ready to file a US patent application covering a key product. Before the application has been filed, you ask your US patent attorney about how soon after filing the application you can look forward to receiving the good news of getting a patent. To your surprise, you learn that, in the ordinary course, it would likely take about two to three years, and sometimes even longer. But your company does not want to wait that long. You ask if there is anything that can be done to speed up the examination process to get a patent sooner.
Now imagine a different scenario. Your company is getting ready to file a US patent application on a product that is still in development. The application covers several alternatives for the product, and it is not yet clear which of the alternatives will be included in the commercial product. It certainly is not yet known which of the alternatives your competitors might decide to implement in their competing products. You ask if it is possible to delay examination of the patent application to obtain more time.
The following presents strategies your company can implement in answer to both of the foregoing questions.
Accelerating Examination
Speeding up examination of a patent application can be important for several reasons, such as, improving competitive positioning and company valuation, securing patent rights to enforce against competitors, and learning quickly whether the invention is patentable prior to spending significant resources to pursue patent protection in jurisdictions outside North America.
There are several ways to speed up examination of a U.S. patent application. The most potent option is to pay an additional official fee to accelerate examination under the Track One Prioritized Examination program. This program is available for virtually any new patent application meeting several technical requirements and simply requires payment of a fee of $2100 for most small businesses or $4200 for companies that have over 500 employees. The Track One program guarantees a final disposition (i.e., an allowance or a final rejection) of the application within one year. Indeed, current statistics demonstrate that applications filed under the Track One program typically reach a notice of allowance in just over six months. Moreover, applications filed under the Track One program tend to receive more favorable treatment by the USPTO as a result of being assigned to more experienced patent examiners who are more likely to grant patents.
Another way to accelerate patent examination in the US is to file a petition to make special. This approach does not require payment of any fees, but the application must meet one or more of the following criteria:
· At least one of the inventors is 65 years old;
· At least one of the inventors is in poor health, or
· The invention will materially enhance the quality of the environment, contribute to the development or conservation of energy resources, or contribute to countering terrorism.
In addition, patent applications related to COVID-19 may receive accelerated examination.
It may also be possible to use the Patent Prosecution Highway (PPH) program to accelerate examination. This program requires prior allowance of claims in a corresponding non-U.S. application. There are no official fees for requesting participation in the PPH program. While applications participating in the PPH program generally receive fewer official actions and are allowed at a higher rate, there can be downsides. In particular, there are limitations on how the claims can be amended, which may create a challenge in overcoming rejections raised by a US patent examiner.
Delaying Examination
There are also a number of reasons that it may be desirable to slow down examination of a patent application. Such reasons include a desire to defer costs, determine the claim strategy to cover a competitor’s product, and a need to obtain time for obtaining additional data or experimental results to strengthen the arguments for obtaining a patent. There are several options for delaying examination.
The patent rules permit filing a request to suspend examination for up to three years. The suspension request can be filed at any time before issuance of a first action on the merits by the USPTO. There is only a small official fee for filing the request.
Additional limited options for slowing down examination include requesting suspension of action for up to three months subsequent to the filing of a request for continued examination or filing a petition for suspension of examination of up to six months upon showing of a good and sufficient cause and payment of a small fee.
Moreover, it is possible to take advantage of various strategic options that will result in slowing down substantive examination. While such an approach is not a “formal” mechanism for delaying examination, they can help achieve the desired result. An exemplary process for proceeding slowly could include the following steps:
1. Filing a patent application without meeting formalities (such as, without paying the fees), which would delay commencement of substantive examination;
2. Presenting claims directed to multiple inventions, which would likely trigger an action by the USPTO requesting election of one of the inventions prior to commencement of substantive examination;
3. Responding to rejections by the USPTO with only a pro forma response, which would likely lead to the patent Examiner maintain the rejections;
4. Filing a notice of appeal in response to final action rather than filing a substantive response; and
5. Filing a continuation patent application instead of an appeal brief in order to restart the entire cycle.
The USPTO has a process that permits the payment of a fee to extend the deadlines at each of the foregoing steps. It is generally most cost-effective to pay for no more than two months of extension at each step. By taking advantage of these extensions of time, each cycle of the strategy set forth above might provide a delay of about 18-24 months.
Conclusion
USPTO patent rules and procedures provide numerous options for controlling the speed of patent examination. By taking advantage of these options, you can meet your business goals by accelerating or slowing the time spent in obtaining a patent.