February, 2015
“Why does it take so long to get a patent?” — Four programs available at the U.S. Patent Office that can shorten the time an application is pending.
Many U.S. patent applicants are experiencing long wait times during prosecution of their applications. It is currently not uncommon for non-provisional patent applications to be pending for 2 years before they come up for first examination. Once the examination process has begun, prosecution times can exceed another 1 year before claimed subject matter is either allowed or finally rejected. In total, a non-provisional patent application can be pending for at least 3 years. Further, many U.S. patent applications start life as a provisional application. Any earlier provisional period before non-provisional filing will extend the overall wait time towards 4 years.
What can be done to shorten the time an application is pending? This guidance describes four programs currently available at the U.S. Patent Office designed to reduce wait times before or during examination.
1. Accelerated Examination (“AE”)
The U.S. Patent Office has stated a goal of examining a patent application filed under AE within 12 months. That is, the expectation has been set that an applicant will receive either allowance of the patent or a final rejection within one year from filing. While this goal is non-binding, the statistics from the Office indicate that goal is being met in many cases.
Generally speaking, AE requires the applicant to submit, with the initial filing of the application, several documents which serve as a substitute for the Examiner’s first Office Action. The applicant must submit evidence of a prior art search done before filing, along with a report of the resources searched, the search criteria used, and the references found. The search must be done in the both the U.S. and non-U.S. patent literature, as well as non-patent literature worldwide. The search must be at least as comprehensive as a hypothetical corresponding search by a U.S. Examiner.
In addition to the search report, the applicant must submit a document discussing each of the most relevant prior art references found in the search, pointing out where disclosure in each reference is relevant to the claims submitted in the application, and justifying why the claimed subject matter is allowable in view of such prior art disclosure.
Once received, the U.S. Patent Office assigns the case to an Examiner, who then puts the case at the top of his or her docket. The Examiner validates that the search was sufficiently extensive and on point. The Examiner and applicant then communicate via interview and writing to bring the application either into allowance or final rejection. Short response deadlines are imposed to move prosecution along quickly.
The advantages of AE (over other forms of expedited examination) include (a) a statistically high probability of allowance of the application (according to statistics published by the Office); and (b) significantly lower governmental filing fees.
It is worth elaborating on the higher chance of allowance of the application under AE. According to statistics published by the U.S. Patent Office at the time of writing, an application given AE status currently has about an 80% chance of being allowed. This is as compared to applications not treated under AE, whose chances of allowance are currently reported to be less than 50%.
The disadvantages of AE include (a) significantly higher attorney fees preparing the application for filing, and (b) burdening the file history with the applicant’s own statements characterizing the prior art, which if incorrect or misleading may be used against the applicant by future infringers attempting to invalidate the patent to avoid infringement.
Note that the significant expense for conducting the prior art search can be reduced in some cases by outsourcing the search to a professional prior art search firm,
Whether the search is outsourced or done in-house, there are nonetheless also significant timeline considerations prior to filing. It takes time to conduct the search and prepare the associated analysis documents, and the application must be complete at the time of filing in order to claim the benefit of AE. Thus care must be taken to plan the pre-filing preparation of all the documents in time for them all to be complete before the priority deadline. In the case of a Paris Convention application, this is 12 months after the first original filing in the home country, and in the case of a PCT application 30 months after the first original filing.
2. Prioritized Examination (“PE”)
As with accelerated examination (AE), the U.S. Patent Office has stated a goal of examining a patent application filed under PE within 12 months. Again, as with AE, while this goal is non-binding, the statistics from the Office indicate that goal is being met in many cases.
The primary difference between PE and AE is that under PE, no pre-filing search or analysis is required by the applicant. The application is filed in the normal way, except that examination under PE is requested.
PE comes at a price, however. At the time of writing, the surcharge fee at the U.S. Patent Office for submitting an application for PE is U.S. $4,000.00 for large entities and U.S. $2,000.00 for small entities. This surcharge is in addition to any other filing fees required for filing a patent application at the Office in the normal way.
As with AE, the U.S. Patent Office receives a PE case and assigns it to an Examiner, who then puts the case at the top of his or her docket. The Examiner conducts a search and prepares a First Office Action in the usual way. The Examiner and applicant then communicate via interview and writing to bring the application either into allowance or final rejection. Short response deadlines are imposed to move prosecution along quickly.
The primary advantages of PE (over other forms of expedited examination, and particularly AE) include (a) simplicity of filing, particularly on a tight deadline, and (b) the applicant avoiding having to characterize the prior art on the record.
Cost over AE is not really a factor. While the filing fees in PE are much higher than for AE, the attorney/consultant costs to the applicant for conducting a pre-filing search and for preparing pre-filing analysis in AE are likely to be at least comparable to the increased filing fees in PE.
Note that PE does not improve the quality of examination by the U.S. Patent Office. PE only speeds examination up. Thus many of the problems applicants face today dealing with inexperienced or intransigent U.S. Examiners will persist with PE. For this reason, the statistics on successful allowance of a patent under PE (as published by the Office) are no better than in a normal case filed without expedited examination.
One last factor is that at the time of writing, the U.S. Patent Office has set a limit of 10,000 applications that will be granted PE status in any fiscal year (“FY”). The Office is currently in FY 2015, which runs from October 1, 2014 through September 30, 2015. Based on the growth of use of PE by applicants over the last 2 or 3 fiscal years, it is expected that in FY 2015 the 10,000 application limit may be reached as soon as June 1, 2015. Thus it is possible that PE may not be available later on in FY 2015. Applicants intending to seek PE in FY 2015 are well advised to file sooner rather than later.
3. Patent Prosecution Highway (“PPH”)
PPH is a program available only to foreign applicants who have already filed in their home countries, and who are now seeking counterpart patent protection in the United States. Not all foreign patent offices are on the PPH. However, the foreign patent offices in many of the world’s economically-developed countries are on the PPH. A list of countries on the PPH is available on the U.S. Patent Office’s website.
PPH requirements vary from country to country. The overall idea, however, is that when claimed subject matter has been searched, examined and allowed in a first patent office (usually the applicant’s home patent office), a second patent office in a second country on the PPH will give deference to the first country’s search/examination/allowance by expediting the examination of the counterpart patent application in the second country.
The U.S. Patent Office handles applications claiming the benefit of the PPH by granting them accelerated examination (AE) status. Details of the first (home) country’s search, examination and allowance are submitted to the U.S. Office and substitute for the pre-filing search and analysis normally required by AE. Note that the U.S. Examiner is not bound by the first country’s search, examination and allowance. The U.S. counterpart application is still examined under U.S. law. The examination is nonetheless expedited, per the applicable details discussed above under AE.
The primary advantage of PPH is the expedited examination given in the U.S. via AE status. One disadvantage is that the claimed subject matter in the U.S. must be the same or comparable to the claimed subject matter that is allowed in the first country. Thus if the first country insists on very narrow claims drawn only to specifically disclosed embodiments, and if U.S. law permits broader claims, the potentially available claim coverage in the U.S. may be limited arbitrarily by using the PPH.
In addition to claim scope, applicants should review timing considerations when evaluating whether to file under the PPH in the United States. A request for PPH treatment can be filed at any time in the United States. However, the PPH obviously has no value until claimed subject matter has been allowed in the first country. If claimed subject matter is unlikely to be allowed in the first country until the counterpart U.S. case comes up for examination under normal circumstances, there is little point in filing under the PPH. Foreign applicants filing in the U.S. under the PCT are more likely to have a longer time lapse between home country examination and U.S. examination than those filing under the Paris Convention because of the longer priority filing deadline under the PCT (30 months for PCT vs. 12 months for Paris Convention). Thus the PPH may be a more viable option for applications filed in the U.S. under the PCT than those filed under the Paris Convention.
Note also that as with prioritized examination (PE), expedited examination under the PPH does not improve the quality of examination by the U.S. Patent Office. The PPH only speeds examination up. Thus, as with PE, many of the problems applicants face today dealing with inexperienced or intransigent U.S. Examiners will not change with PPH treatment.
4. Full First Action Interview (“FFAI”) program.
Under this program, U.S. applicants may request FFAI treatment at any time before the First Office Action on the merits. The FFAI program does not shorten the time period between filing and a First Office Action. The FFAI program is intended to shorten prosecution once the application has begun examination.
The general idea under the FFAI program is that once the Examiner has completed his or her initial prior art search, the Examiner communicates the search results to the applicant before a First Office Action is written up. The Examiner also discloses informally the claim rejections that he/she proposes to make in view of the search results. The Examiner and applicant then have an interview where the claims and the prior art are discussed, claim amendments (if necessary) are proposed, with a goal of reaching agreement on allowable subject matter before the First Office Action is filed. The Examiner then writes up the First Office Action in view of any agreements reached.
The advantage of the FFAI program is that if agreement can be reached in the interview, the application will receive a First Office Action allowance. A First Office Action allowance reduces substantially the time that an application spends in examination.
The disadvantage of the FFAI program is that there is no guarantee that agreement will be reached in the interview. Prosecution of the application is thus no better off time-wise for the FFAI treatment. A pessimistic view is that given the difficulties currently faced by U.S. applicants dealing with inexperienced or intransigent Examiners, the program has little chance of success.
Nonetheless, a request for treatment under the FFAI program currently has no associated fee, and in a suitable case there is not much to lose by requesting such treatment.
Note that any application is entitled to request FFAI treatment. FFAI may be redundant in accelerated examination (AE) and prioritized examination (PE), however, since short deadlines for communication between Examiner and applicant are already required under AE and PE.
Conclusion
This guidance has highlighted four programs at the U.S. Patent Office designed to expedite the examination of a patent application. The suitability of these programs for any specific proposed or pending application should always be evaluated on its own merits. Please contact the lawyers at Zeman-Mullen & Ford, LLP with any specific questions, or for more detailed general information.
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September, 2011
Dramatic changes to the United States patent laws
Welcome to a brave new patent world in the United States.
On September 16, 2011, President Obama signed the “America Invents Act” into law. This legislation makes the most sweeping changes to the United States patent laws since 1952.
The new laws bring numerous changes to the way that the business of patent law is done in the United States. For example, these changes are expected to affect profoundly the timeline on which inventors and technology companies will file for U.S. patents in the future. The changes will also give technology companies additional options in challenging their competitors’ U.S. patent filings if it appears the claims are too broad or invalid.
This update highlights two of the major changes brought about by the new laws. Readers should be aware, however, that the new laws work many changes in addition to the two highlighted here. For most, the devil will be in the details.
“First to File”
A “first to file” system will replace the current “first to invent” system. This means that a U.S. patent will go to the inventor who first filed a U.S. patent application on an invention, regardless of whether that inventor was the first to invent the invention. A further change, once the “first to file” system is in place, is that an inventor may no longer “swear behind” a prior art reference by providing evidence that he or she invented before the reference was published. The reference will be prior art if its publication date is before the date that the inventor files for a U.S. patent.
Both of these changes are scheduled to become effective eighteen months after the legislation became law (i.e. March 16, 2013). However, it is possible that unforeseen complications in detailed rulemaking by the U.S. Patent Office may delay final implementation.
These two changes mean that in the future, inventors and technology companies will risk delaying filing a U.S. patent application at their peril. It is anticipated that substantially greater numbers of provisional patents will be filed in order to offset the increased cost and uncertainty of early filing.
Additionally, the prior art effect of publications will become more certain. On the other hand, delays in filing may cause a publication to become prior art against an application that might have avoided the reference if it had been filed earlier.
Peer Review of Pending Applications and Issued Patents
The new laws will introduce a wider system of peer review of pending U.S. applications and issued U.S. patents. Third parties will be able to bring prior art to the attention of a U.S. Patent Examiner while a patent application is still pending. Also, after a patent has issued, the current mechanism of re-examination will be augmented by an additional review process. This post-grant process will be similar to opposition proceedings that are available in some jurisdictions overseas.
It is not exactly clear when these new review mechanisms will become available. The law gives the U.S. Patent Office one year to develop rules governing these additional review mechanisms. Thus the target date for implementation is September 16, 2012. Unforeseen complications in rulemaking may delay implementation, however.
Third-party submission of prior art in a pending U.S. patent application looks to be a fairly straight forward process. Once the third party becomes of aware of the application (usually via publication), he or she may cite prior art references to the U.S. Patent Office that the third party considers relevant to patentability of the pending claims. The third party will be required to pay a fee for citing the reference. Additionally, deadlines will apply, after which the third party must call attention to the prior art references via one of the more complicated post-grant review mechanisms. Thus, third parties will be well advised to submit such references as soon as possible after publication of the patent application.
Technology companies with a coherent freedom-to-operate program will likely gain competitive benefit from the ability to cite prior art in a competitor’s pending patent application. Currently, if the freedom-to-operate program identifies a pending application causing concern for potential future infringement, and if the third party has relevant prior art of which the U.S. Patent Office appears to be unaware, the third party’s options include: (1) designing around, (2) filing for re-examination if and when the patent issues, or (3) waiting until the patent issues and asserting an invalidity defense if the patent owner sues for infringement. Each of these alternatives carries uncertainty and potential cost because the patent was granted notwithstanding the existence of relevant prior art that the U.S. Patent Office did not consider. There is clear value in the ability to cite prior art to defeat or limit the pending application’s claims before they are issued.
Even if a patent with suspect claims is granted, new post-grant review procedures should bring additional certainty to technology companies in their efforts to develop and commercialize technology that does not infringe. Under the new laws, a “Post Grant Review” process will become available. This process will be available for up to nine months after a patent has issued. In this process, a third party may challenge the validity of any of the claims of the issued patent on any grounds permitted by the U.S. patent laws. In other words, the challenge need not be limited to a review based on prior art. The challenge may, for example, be based upon the patent specification being defective or insufficient. In this way, as noted above, the Post Grant Review process will be similar to the opposition process currently available, for example, in Europe.
Additionally, a process similar to the currently-available third party re-examination process will still be available under the new laws, although it will be known by a new name (“Inter Parties Review”). Like re-examination, Inter Parties Review will be limited to a review of the validity of a granted patent based on prior art printed publications only. Some of the procedural rules governing Inter Parties Review will be different from the current rules governing re-examination. Notably, Inter Parties Review will only become available once the period for Post Grant Review has expired.
The new review mechanisms have been welcomed by many as potentially lower-cost, more predictable alternatives to patent litigation. Time will tell whether this optimism proves to be well founded. In the meantime, however, technology companies will be able to look forward to additional options in limiting or defeating claims of their competitors’ patents and applications that may be too broad or invalid.
Conclusion
This update has highlighted only two of the forthcoming changes to U.S. patent law. As noted above, the devil may well be in the details. Please contact the lawyers at Zeman-Mullen & Ford, LLP with any specific questions, or for more detailed general information.