By Jason Sanders
They say that patience is a virtue. Yet with patent prosecution, patience isn’t as much of a virtue as it is a requirement. Certainly the 28-and-a-half-month average pendency of a patent application will test anyone’s patience.1 And it gets worse: the United States Patent and Trademark Office (USPTO) estimates that the total pendency stretches to over 37 months.2 In some hot technologies such as software and consumer electronics, the product life cycle may be shorter than the pendency of a patent application. And for many startups issued patents may be beneficial for funding purposes. With statistics and challenges like these, any applicant’s patience may be tested.
There is hope, however. There are a number of programs and practices that may be used to expedite patent prosecution. And in some situations these practices may be less expensive and result in better prosecution. These techniques include Accelerated Examination (AE), Patent Prosecution Highway (PPH), Prioritized Examination (PE), Petitions to Make Special, First Office Action Interview Program, and the After Final Consideration Pilot Program.
Under the Accelerated Examination program, the USPTO will “advance an application out of turn for examination if the applicant files a grantable petition to make special under the accelerated examination program.” The goal is to complete examination within one year. The filing requirements include conducting a pre-examination search and an accelerated examination support document. These documents must be filed when the application is filed. The accelerated examination support document, which is like an office action written by the applicant, may potentially create prosecution history estoppel (disclaiming what is in the prior art) and inequitable conduct (failure to disclose relevant art). The time periods for replying to an office action are shortened. The upside is that accelerated examination application has an allowance rate of 80%3 compared with 51.9%4 for non-accelerated examination applications. Accelerated Examination can be beneficial for narrowly tailored claims that may already be infringed.
The Patent Prosecution Highway (PPH) leverages the examination from other jurisdictions. An applicant receiving a ruling from a first office (a foreign office) that at least one claim in an application is patentable may request that the second office fast track the examination of corresponding claims in corresponding applications filed in the second office (e.g., the USPTO). This can include a favorable opinion from a PCT search report and written opinion. The PPH can be filed after the application has been filed but must be filed prior to the beginning of examination. Strategies can include proceeding with a patent application in a foreign jurisdiction with a known short pendency such as Australia, Canada, Finland, or Denmark, and then proceed in the U.S. The allowance rate of PPH patents at the USPTO is greater than 90%.5 The PPH can be beneficial when proceeding internationally. Because of the quicker pendency and the leveraging of foreign prosecution, the overall prosecution costs may be significantly lower. Furthermore, there are no prosecution history estoppel or inequitable conduct issues to deal with.
Prioritized Examination (or track one examination) is a new program that “gives your application special status with fewer requirements than the current accelerated examination program and without having to perform a pre-examination search.”6 Under prioritized examination, patent applications are taken out of turn in exchange for payment of a $4,000 fee ($2,000 for small entities and $1,000 for micro-entities). A petition must be submitted at the time of filing or when filing an RCE. And the application is limited to four independent claims and 30 total claims.
There are number of benefits to prioritized examination. First, the goal of the program is to have a final disposition within a year. Indeed, the pendency of a prioritized examination application is 5.1 months from the date the petition is granted to allowance of the application. This is a drastic reduction from the current 28-and-a-half-month pendency. Second, the examiners tend to be more engaged and motivated to move the process along. This includes examiners willing to have multiple interviews and examiners more willing to make an examiner’s amendment. Third, the shorter pendency tends to reduce the number of office actions, which typically decreases the amount of attorney time required and, therefore, reduces the attorney fees. One downside to the program is the filing fees, which are often recaptured in the reduction in attorney time. The other downside is the emphasis on prompt responses to the USPTO, which is alleviated with a patent attorney that is responsive and nimble.
Other petitions to make special include petitions to expedite examination because of an applicant’s age or health. These programs can move an application to the top of the examination queue without requiring a fee or any other additional work.
The First Office Action Interview Program is a new pilot program that requires an interview with the examiner prior to the first action. The claims are limited to three independent claims and a total of 20 claims. The examiner issues a pre-interview communication (similar to a PCT search report) that includes prior art found by the examiner and provides a forum for the applicant and the examiner to discuss the prior art before the first office action. The claims may be amended prior to the first action to distinguish the application from the prior art. Also, the purpose and scope of the claims may be discussed with the examiner prior to the first action to properly align the examination with the purpose and scope of the claims. An added benefit is that some examination is done off record in the interview.
The After Final Consideration Pilot Program allows claims to be examined after a final office action without filing an RCE. Currently, pendency from filing an RCE to the next action is over seven months. The current program speeds up this process significantly. The program requires “amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect.” The program provides the examiner with more time to examine the claims, which is a benefit enjoyed by many examiners. At a minimum, this program provides an alternative to filing an RCE, which is time consuming and expensive, and provides the examiner more time to consider claim amendments.
Expedited patent prosecution strategies are an important consideration for all applicants. There are many nuances that require a patent attorney that is familiar with the programs and nimble enough to work through the hastened time frames as well as savvy enough to help guide the examiner through the program. Many programs not only reduce pendency but also reduce costs. Patience may be a virtue, but it shouldn’t be a requirement for patent applicants.
1 USPTO Dashboard, http://www.uspto.gov/dashboards/patents/main.dashxml, last visited February 13, 2014.
3 Hilberg, et al., “Accelerated Examination: A Second Look: Reconsidering the Benefits of the USPTO’s New Accelerated Examination Program.”
4 U.S. Patent Statistics Chart, http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm.
View the full presentation here.