Tips to Legally Speed-Up Patent Prosecution Process
An average application filed at the U.S. Patent and Trademark Office (USPTO) takes two years or more after filing for the complete patent prosecution process. According to the reports of a survey conducted by USPTO, an average 23.1 months from filing to issuance is most common in all patent applications.
This time frame gave birth to a genuine concern from every applicant’s perspective. While waiting for the application to pass through all phases of filing, registering, and passing the office actions raised by the patent examiner, what happens if someone also got the same idea or tries to steal from the previous filer. Well, such queries raise a bar on not only the USPTO prosecution process but on the quality and integrity of the presented data, as well.
Generally, applicants file applications thinking that this might be the only way through which they can get a patent, but this is not a true judgement. The three approaches explained within this article will enlighten you about the beneficial legal ways to speed-up your patent prosecution process. Also, these approaches will accelerate their application status and will sanction a U.S. patent within 12 to 18 months after filing.
Functional Tips to Speed-Up Patent Prosecution
1. Take USPTO’s Prioritized Patent Examination Program: The most time-taking among the whole patent prosecution process is Patent Examination. So, the most potent way to optimize the overall speed is to employ the USPTO’s Prioritized Patent Examination Program (or ‘Track One’). This program will put applicant’s application much before the early filers, giving an extra time frame to send early office action responses back to the examiner and opportunity to have patent before the early filers. To get more, filers have to pay more than the regular filers. The extra fee might range from $1K to $4K depending on the company’s size. Fee doesn’t matter for large filers that want VIP entry to the queue.
This program ensures that the examination gets completed within 12 months of filing, which cuts off time of examination by directly 46-48%. Not only speed, this program even offers other advantages, such as providing benefit of yielding a higher average allowance rate, asking for fewer pre-requisites, and even allowing submission without conducting pre-examination search. The program has only been launched for utility and plant patent applications by the USPTO.
2. Make face-to-face discussions with patent examiner: Face-to-face communication or a verbal communication is always better than the written one. Similar in the case with the USPTO examiner during the process of examination of the application. Verbally communicating about the inventor will help analyze the invention in lesser time and with more accurate rate. This is an effective way to take the application successfully till the issuance stage in more reliable way.
Often there are cases, when written text has caused misleading of the claimed facts causing misunderstanding about the stated information. This further leads to un-favorable situations for the applicants. The limitations can serve both frustrating and inefficient for the applicant as well as the patent examiner.
For avoiding all these troubles to both the participants (applicant in this case) and the judging (patent examiner) party, USPTO offers some privileges to the applicant to have one-on-one conversation directly with the patent examiner via telephone, web conference, or in-person interviews. The resulting interviews are successful in avoiding the aforementioned troubles between the two parties, by letting both the parties, present their perspectives and can implement them (if required). Examiners are generally concerned about the efforts of the applicants and show more interest in understanding the invention directly from the inventor, making them believe on its correctness and putting on queries at the same time, making it a healthy discussion in favor of the applicant. Sometimes, the technology is so complex that only the inventor can make the examiner understand its functionalities. On the other side of table, Examiners are usually happy to meet the person behind the invention, since applicant’s presence and participation reflects his/her concern and how much the application matters to him/her.
By employing the USPTO’s First Action Interview pilot program, an applicant can now make a request for an interview before the examiner could finish up with the full evaluation of the application.
3. Use USPTO’s PPH program: The USPTO’s Patent Prosecution Highway (PPH) is also a remarkable alternative to speed-up patent prosecution process. This highway program allows applicants to accelerate the examination process of the participating IP offices for their corresponding applications. According to PPH, the participating offices comes to a mutual agreement that when an applicant receives a final ruling (at least one of their claim is allowed) from a first patent office then the applicant can appeal for fast track examination of corresponding claim(s) of that application which is pending in a second patent office. This allows speed optimization of the patent application to reach final disposition of a patent application in less time as compared to the normal examination processing. Applicant’s does not need to pay any extra fee under PPH program.
Currently, the patent office’s eligible for PPH review are established in countries such as, Canada, China, Europe, Japan, etc. Improved speed facilitates USPTO to make independent evaluation on improved results over conventional processing. This program benefits the companies involving lots of foreign patenting activities, which are willing to establish new grounds of their success, very similar to the ones they already have in the U.S.
Using these techniques and programs will definitely cost (in some cases) a bit more than the conventional one, but for those who wish to have patents faster than the usual time, these techniques are a gift. The applicants can not only speed-up the process, but also their likelihood of achieving their patent.