Strategies to Reduce Application Pendency

(IPRinfo 2/2011)

Joshua P. Wert
U.S. Patent Agent, Seppo Laine Oy

A number of options are available to fast-track a patent application.

Two words that are rarely associated with each other are ”fast” and ”patents”. In fact, many patent applications around the world are not looked at by an examiner until years after the application was filed. Many patents are not granted until a decade has passed from the initial filing.

Under-funded and under-staffed patent offices can be blamed for this along with some applicants’ desires to postpone the grant of their own patents. However, for those inventors and companies that want or need a patent on their invention quickly there are a surprising number of options to ”fast-track” an application.

Total time from filing to grant
As of January 2011 the average wait between filing an application and receiving a first office action at the United States Patent and Trademark Office (USPTO) is 24.2 months. Compared to statistics of the Finnish National Board of Patents and Registration (PRH), which for 2010 averaged 8.4 months from the filing of a priority founding application until first office action, the USPTO appears to greatly lag behind the PRH in processing patent applications. However, the average total time between filing of an application and the grant or final rejection of a patent application (pendency) at the USPTO is 34.5 months compared to 34 months at the PRH.

For comparison, the average pendency in the Japanese Patent Office (JPO) was roughly similar to that of the USPTO and the PRH at 35.3 months as of 2009, but the average wait for applicants in the European Patent Office (EPO) was a staggering 41.7 months for the same year.

PPH a way to speed up the application
2006 brought with it a partial answer to applicants’ desire of speeding up the processing of their applications. In that year several patent offices began participating in Patent Prosecution Highway (PPH) programs in an effort to reduce redundant work at multiple patent offices. These programs allow a patent applicant the ability to speed up the processing of their application in one or more countries once the initial filing country indicates that their invention is allowable.

Many countries’ patent offices now have several PPH agreements. For instance, Finland has bi-lateral PPH agreements with Austria, Canada, Hungary, Japan, the Korean Republic and the United States. The United States has the largest number of bi-lateral agreements with Australia, Denmark, the EPO, Germany, Russia, Singapore, Spain and the United Kingdom in addition to the countries it has in common with Finland.

While there are several important requirements for applications to qualify for participation in a PPH program, the main requirement is that the patent office which indicates that the invention is allowable and allows fast-tracking of other applications must be the patent office where the first application was initially filed.

In addition to the standard PPH programs, in 2010 several PCT-PPH programs began which allow a positive search report from certain countries to allow the national and regional stage applications claiming priority from the PCT to be advanced out of turn.

The choice of an initial office is vital
In order to effectively use PPH programs to build a patent portfolio quickly, initial filing strategy is extremely important. First, it is of essence to choose an initial office which has bi-lateral agreements with the countries where patents are ultimately desired. Second, it is important to select a route with the best chance at a quick indication of allowable claims.

Being able to decrease the average time between initial filing and first action at the USPTO, or between the first action and indication of allowability at the PRH can make a huge difference between which of the two offices is a better choice for initial filing.

Drafting an application which has narrow enough claims to meet the novelty and inventive step tests during the first examination can lead to an indication of allowability and even a granted patent from the PRH in a very short amount of time, e.g. 8-18 months. PPH requests can then be filed in countries such as the United States resulting in first office actions 4-6 months later. However, even a well drafted application filed with the USPTO will, on average, not receive a first action for over two years.

USPTO Provides Options for Accelerated Examination
The USPTO has a growing number of options for speeding up the processing of their own applications. These programs can substantially reduce a first filed or co-pending application’s average pendency, some by as much as 24 months.

Is one of the inventors elderly or in poor health? If so, their patent application may be eligible for fast-tracked status with the USPTO. The only requirement is that the applicant must show evidence they are over the age of 64 or a medical certificate stating they are in poor health. No fee is required. If an applicant does not qualify for special status then the content of the application may qualify it for Accelerated Examination (AE). The USPTO may grant special AE status to applications which are, ”deemed of peculiar importance to some branch of the public service…” and which meet several AE program requirements.

Inventions relating to recombinant DNA research, superconductivity technologies, HIV/AIDS and Cancer can all be granted AE status and processed ahead of the over 700 000 current pending applications for the small fee of $130. Small entities (e.g. individuals and companies with less than 500 employees) with an invention relating to biotechnology can also request AE status as long as they state the application is a major asset for their company along with the required fee.

Applications which relate to the enhancement of the quality of the environment, the development of conservation of energy resources or contribute to countering terrorism are deemed so important that they may be granted AE status without payment of any additional fees.

In order to qualify for Accelerated Examination the application must fall in one of the groups outlined above and the applicant must provide an Examination Support Document (ESD). The ESD must show at least that a search was made and how the claimed invention differs from the prior art.

Additionally, these applications are limited to 4 independent claims and a total of 30 claims. In return, the USPTO pledges to give a first office action within 4 months of filing and to complete examination of the application within 12 months from filing.

Clean technology inventions are handled fast
Furthermore, in response to the Obama administration’s goal of improving the United States’ impact on the environment, December 2009 saw the launch of the Green Technology Pilot Program at the USPTO. Under the program, if an application relates to clean technologies, increasing environmental quality, energy conservation, development of renewable energy resources, or greenhouse gas emission reductions then the application can receive accelerated examination.

However, the program is a pilot and is limited to the first 3 000 granted requests. As of January 31, 2011 only 1 215 requests have been granted. To reduce the burden on applicants and encourage participation in the program there is neither ESD nor fee required. As long as a request is made before the pilot program ends and the application relates to one of the mentioned technologies then the application will be examined out of turn.

In addition to these programs, other programs currently exist which either relate directly to or have the benefit of accelerated examination. Programs such as the Peer Review Prior Art Pilot allow an application to be examined out of turn as compensation for participation in the program. Furthermore, a portion of the USPTO’s proposed ”Three-tracked Examination”, which may come in to effect as soon as June of this year, will allow virtually any patent application to be examined out of turn for a fee.

The current proposal would limit eligible applications to 4 independent claims, a total of 30 claims and sets the fee for accelerated examination at $4 000. However, the USPTO pledges similar results to the AE process of a first office action within 4 months and completing the examination within 12 months.

Filing strategy can reduce pendency
Accelerated Examination before the USPTO not only potentially leads to the fast grant of a U.S. patent, but any indication of allowable subject matter during prosecution can be used through the available PPH programs to fast-track the prosecution of co-pending applications around the world.

Therefore, if the normal patent process is too lengthy, consider if the applicant or invention qualifies for special status in the United States. If it does, then consider filing the first application with the USPTO in order to take advantage of not only that applicable program but also the extensive network of PPH agreements the USPTO has in place.

If the applicant or invention does not qualify for special status, then consider drafting the claims in such a way that they have a strong chance of passing examination on first review by the PRH, which pledges a first office action within 8 to 10 months. Additionally, properly filed applications with both the USPTO and PRH on the same day are both considered initial filings and provide an applicant the maximum opportunity to take advantage of fast-tracking options for subsequent filings.

Thoughtful consideration of an initial filing strategy can therefore reduce the time from the first filing of an application until an international patent portfolio for the invention is in place by several years or more, leading to stronger IP and greater potential infringement awards.