Accelerating Patent Prosecution – Strategies for Obtaining Early IP Protection

Fast issuance of a patent can be critical for an early-stage company. Patent protection can deter competitors and create value for investors. Unfortunately, as of May 2015, the United States Patent and Trademark Office (USPTO) reported a typical time to first Office action of more than 18 months, and a typical time from filing to final disposition (whether rejection or allowance) of more than two years. These dates are measured from the filing date of the application, not its priority date; if an applicant takes advantage of a provisional filing, the time from initial filing to allowance of a patent may be more than three years.

The inability to obtain an early patent can have many consequences. The 20-year term of a patent is measured from the first non-provisional filing, and while there are some provisions of United States patent law that add days to the term of a patent due to USPTO delay, those provisions do not account for the entire period of possible delay. Prior to the grant of a patent, an applicant does not have rights that can be enforced against third parties that copy the invention. Without a patent, there is no way to determine the scope of the right of exclusion that may be applied to competitors.

Fortunately, the USPTO offers multiple ways to expedite review of patent applications. These ways include Accelerated Examination, the Patent Prosecution Highway and Petitions to Make Special Due to Age or Health.

One straightforward way to expedite review of a utility application is through Track One Accelerated Examination. Applications qualify for Track One examination if they include no more than four independent claims and no more than 30 dependent claims. To enter the program, an applicant must file a simple petition and pay a $4,000 fee ($2,000 for small entities). The USPTO limits the total number of Track One applications to 10,000 per year.

Typically a decision on the petition for Track One examination is made in slightly more than one month. If the petition is granted, and if the applicant maintains the application on the accelerated track, examination begins about two months after the petition is granted and typically continues three to four additional months before allowance or final rejection of the application. To maintain its application on the accelerated track, an applicant must respond promptly to all communications from the USPTO. Once a final decision has been rendered, the application returns to the regular examination track.

Another straightforward approach to expediting review of a utility application is through a Petition to Make Special Due to Age or Health of the applicant. Applicants 65 years or older, or applicants who are in a state of health that they might not otherwise be able to assist in prosecution of the application if it were to run its course, may apply to have their application taken out of turn. There is no fee for this petition, though once the application is published any medical information that the applicant has disclosed will be available to the public.

The Patent Prosecution Highway (PPH) is another, more roundabout option for expediting review of a patent. The PPH is available to an applicant for a United States utility patent who has received a favorable search report from a foreign jurisdiction for one or more claims of a related application. To participate in the PPH program, an applicant must file a petition, including the favorable search report. The applicant must also amend the claims of its United States application to correspond to the claims that were viewed favorably in the foreign search report. Although such an amendment might narrow the scope of protection available in the initial patent application, the use of the PPH does not foreclose the filing of other related applications prior to issuance of the original patent.

Many jurisdictions participate in the PPH. One common basis for a PPH petition is a favorable Written Opinion in a counterpart application made under the Patent Cooperation Treaty (PCT). Many applicants file a PCT application with their United States utility application,  allowing the applicant to significantly delay the need to decide where they will pursue their application.

The filing of a PCT application entitles the applicant to a Written Opinion of the International Searching Authority (ISA) and, if a Demand is filed, an International Preliminary Report on Patentability (IPER). An ISA is a national patent office that serves as an arm of the World Intellectual Property Organization (WIPO) for examination of a PCT application.

PCT applicants have substantial discretion to select an ISA. Applicants who file their PCT application in the United States may, depending on the technology of their application choose among the USPTO, European Patent Office (EPO), Korean Intellectual Property Office, IP Australia (Australian Patent Office), the Israel Patent Office and Rospatent (Russian Patent Office). There are many reasons that one might select a particular ISA, including cost (with the EPO and Rospatent being the most and least expensive ISAs, respectively, with a fee difference of about $1,500), future filing plans (where future filing in Europe is more convenient and less expensive if the EPO was the ISA), and desired native language of the personnel doing the search (where applicants who have already commissioned English language searches may wish to have a PCT search conducted by native speakers of a different language).

When considering the PPH, another significant consideration is the length of time that an ISA takes to issue a Written Opinion. Anecdotally, Written Opinions from Rospatent and KIPO are issued very quickly, while Written Opinions from the United States and EPO are not issued quite as fast. Fast issuance of Written Opinions allows applicants to take better advantage of the PPH, potentially at the cost of other advantages offered by the United States and EPO as ISAs.

The PPH allows an application to be taken out of turn for regular examination. Unlike Track One examination, there is no guarantee that an application that is accepted for the PPH will be resolved within a certain time period. No deference is given to the prior search report that was used to permit entry to the PPH, even if the search report was prepared by the USPTO acting as ISA. Still, PPH applications experience prosecution delays up to 75 percent less than non-PPH applications.

Although allowance of a patent application is never guaranteed, expedited applications tend to be allowed at a higher rate than other applications. There is no indication that this higher rate of allowance is solely because the application was expedited. Instead, this is likely because of greater care placed in the drafting of narrow, more-likely-to-be-allowed claims in the case of applications intended for Track One prosecution and because claims that enter the PPH have already been approved by a different examiner (even if that determination was not binding on the USPTO examiner).

Expediting patent prosecution is not without risks. Although the USPTO will consider an application out-of-turn, there is no guarantee that the expedited application will be allowed. Repeated rejections, followed by additional filings and/or an appeal, can be costly distractions that damage morale. Although the “first to file” regime currently in place in the United States (and most other countries) encourages early filing, applicants must still be careful not to file an application before they are able to give a complete disclosure.