A common complaint received from clients regarding the patent system is that it is too complicated and too costly — a perception that in the past has had some basis in reality. Often implicit or explicit in this complaint is that the process of procuring a patent does not meet the business needs of the client. Typically, a client wants to decrease the time from filing a patent application to the grant of a patent. In many instances, the increased satisfaction of receiving an issued patent in the desired timeframe obviates many client complaints, and may even overcome complaints regarding cost.
There are now more than a few procedures for adjusting the pace of examination, including a process for suspending prosecution under limited circumstances, and a number of acceleration procedures available in the U.S. Patent and Trademark Office under specialized circumstances, e.g., a petition to make special based on age (which I have learned from personal communication should cause the application to be acted upon within two weeks) and various pilot programs such as the Green Technology Pilot Program and the Project Exchange program, and the Patent Prosecution Highway. The Patent Prosecution Highway is an accelerated examination procedure that is growing in its use at the USPTO; however, this requires the allowance of at least one claim in a counterpart foreign application and that the U.S. claims be substantially conformed thereto. The following focuses on the advantages of the Track I prioritized examination procedure.
Prior to recent initiatives by the USPTO and the enactment of the America Invents Act, the procedure for accelerating examination was associated with disadvantages of sufficient concern to cause applicants to avoid the process entirely. This process remains available, but has become less desired by patent applicants over time because of the perceived increased litigation risks associated with requirements for pre-examination searching and examination support documents (ESD), which require time-consuming characterization of these documents to be prepared by the applicant. However, the Track I procedure may allow a client to better meet its business needs by adjusting the speed of the examination process by the USPTO.
While Track I prioritized examination is associated with a significant petition fee (currently $4,000), the time advantage can be significant. Patent prosecution is a term of art that refers to the period of time following patent drafting, spanning from the time that the patent application is filed to the time that it grants as a patent. During the prosecution, examiners employed by the USPTO conduct searches of the prior art and use this as a basis for assessing patentability through the issuance of office actions. Responses to the office actions are prepared and filed with the USPTO, with the goal of receiving a notice of allowance. For nonprovisional utility patent applications filed according to the traditional track, the average time from filing of a patent application to issuance of a first office action is 18.4 months, and the average pendency from filing to issue is 29.4 months. In contrast, using the prioritized and accelerated examination procedures, the average time to the first office action is reduced, as is the average time to final disposition. This is perhaps illustrated most vividly with a Track I prioritized filing. As of August, under this procedure, the average pendency from grant of the petition to final disposition was 6.1 months, according to USPTO statistics. Thus, use of the Track I process may result in a notice of allowance being received in less time than the time it takes under other procedures to issue a first office action.
In addition to advantages over the prior accelerated exam procedure, in that the Track I procedure does not have a requirement for a pre-exam search or an ESD, the Track I procedure is also advantageous over the traditional prosecution track from a defensive perspective. Given the relatively short time to grant of a successfully prosecuted Track I application, in some instances, a patent may issue prior to publication of the patent application. However, even where the Track I application is a continuation application that is more than 18 months from its priority date, there can be a significantly reduced time between publication of the patent application and the grant of the patent; thereby, any monitoring third parties are given less notice and less time in which to file prior art with the USPTO.
A different patent strategy may be desired for the Track I process as compared to the traditional prosecution track, as the penalty for taking an extension of time to respond to an office action in a Track I application is loss of the prioritized handling by the USPTO. Since the inception of the Track I process, the recommendation by practitioners has often been to submit a set of claims that are fairly narrowly focused, e.g., a so-called “picture” directed to covering a specific product. This allows for a more focused search by the patent examiner and, hopefully, a focused office action. While the result may be a patent of narrow scope, such a patent may be desirable for a variety of business reasons.
It may be noted that both of the Track I and the conventional accelerated examination procedures have limitations on the number of claims that can be presented. Claims are of concern because it is the claims that define the scope of protection conferred by a patent. However, patentees often address this particular concern by filing a series of related or continuation applications that are based on the same specification but that have claims of varying scope supported by this specification. Current U.S. practice permits continuation applications to be issued that have claims of overlapping, but not identical scope. Thus, in addition to filing a continuation application directed to subject matter disclosed but not claimed in the parent, a continuation application with broader claims that encompass those of the issued parent are permitted. All of these could be reasons for filing continuations that would allow a patentee to begin building its stable of patents. This is not an uncommon strategy even under traditional prosecution strategies to create a stable of patents around a technology, particularly where the technology reflects a key corporate asset or a platform technology.
Clients should be aware of the variety of procedures that can be used at the patent office to adjust the speed of the examination process. This can be valuable information for a client ready to launch a product, a client that has recently received regulatory approval, a client that has concerns regarding third-party infringement, or for a variety of other business.
Cathy Kodroff is a partner in the intellectual property firm of Howson & Howson. Her experience includes more than two decades in patent preparation, prosecution and counseling with a focus on life sciences. She has experience in management and oversight of patent portfolios that include international and foreign counterparts in more than 70 regions and countries.