By: Daniel D. Wright
You need patent rights ASAP? Don't panic.
Sometimes you need a patent, and you need it fast. It could be that a new competitor has entered the field or that you want to buff up your patent count ahead of the next investor meeting. Regardless, you need something on the books ASAP to secure your IP rights. Luckily, depending on the details of your urgency, various opportunities abound.
Assess urgency: Issued patent vs. pending application.
Panic avoided. Time to focus. You should first resolve whether you actually need an issued patent or just a pending application.
Provisional Applications (patent pending, placeholder)
In many situations (e.g., science staff speaking at a conference, marketing releasing a promo, etc.), a pending application filed before your planned disclosure will be sufficient. Indeed, putting together a whole patent application on short notice can be a big undertaking, but you can ease the burden by taking advantage of the unique features of a US provisional filing. Provisional applications are never examined and hold the filing date for up to one year during which you can draft the full application. While the best practice is often to make the provisional filing resemble the full non-provisional application as much as possible, you are allowed, for example, to file conference papers and technical documents as a provisional and make it all look like a patent application later. The danger with this method is that the provisional must support the language of the claims of the non-provisional, but this is a detailed discussion of its own. Anyhow, if you need a patent application on file with only 48 hours notice, you’d probably best use a provisional application.
If you need a patent application on file with only 48 hours notice, you’d probably best use a provisional application.
Non-provisional Application (patent pending, working toward issued)
If instead you’re after an issued patent, you’ll need more than two days and may consider skipping the provisional step. As discussed above, the primary advantage of a provisional is its easiness to file and one year hold on your filing date. Although that year does not count towards your patent term, it does literally delay prosecution. Assuming you know what you want protected and have the data and language on hand to support it, you could file it directly as a non-provisional application to enter prosecution that much sooner.
Patent Cooperation Treaty (PCT)
In a similar manner, you could also skip the Patent Cooperation Treaty (PCT) stage. The PCT system streamlines the process to file an application worldwide at the cost of additional procedural steps that delay its appearance before the local examiners. Instead, you could take advantage of the older “Paris Convention” rules and file directly before the foreign offices of interest within one year of your US filing (provisional or non-provisional, whichever is earlier). However, both the US provisional and PCT process trade comfortable flexibility for expediency, so if you choose to forgo these standard methods, you should be extra diligent in devising your strategy and drafting your documents to ensure that nothing gets left behind. Regarding international filings, you could alternatively file your PCT application simultaneously with an identical US non-provisional. This would get the US case directly in the prosecution queue while the international cases dally in the usual PCT process.
Options for expedited patent prosecution
Paying for prioritized examination
Most patent offices also let you pay for expedited prosecution. Before the USPTO, this is called “Track One” or “prioritizedexamination.” For a fee of $1000.00 to $4000.00 depending on the size of your company, the patent office will enforce shorter timelines on its staff for the prosecution of your application. However, the USPTO considers Track One a mutual agreement to work quickly, and you will forfeit your special status if you take an extension of time on any item or file a request for continued examination (RCE) after a final office action. Therefore, Track One only guarantees that you get through to a notice of allowance or final rejection within their target of about one year.
It should also be mentioned that the USPTO “accelerates” examination of applications concerning certain technology types. You will have to submit a form to notify the patent office if you believe your application qualifies. See the list of industries currently privileged.
Patent Prosecution Highway
Since 2014, certain patent offices have established the “Patent Prosecution Highway” (PPH) to expedite prosecution across a patent family. If you receive a notice of allowance for one application in a participating country and have a parallel case pending in other participating countries, you can apply for expedited prosecution under the PPH in those other jurisdictions.
Frustratingly, however, you must adapt the pending claims to reflect the allowed claims, and many participating patent offices have conflicting preferences and policies regarding claim language, format, interpretation, and scope. For example, one could file a PPH request in China with broad US allowed claims; however, the Chinese Patent Office will still likely demand that the claims be narrowed to better reflect standard Chinese IP practice despite the US allowance. Conversely, you could file a PPH request in the US with Chinese allowed claims, but in this scenario, you’d likely be leaving claim scope on the table since the USPTO generally allows broader claims than the Chinese office.
These situations aside, the PPH can significantly speed up prosecution between jurisdictions with similar policies or in jurisdictions less valuable to your strategy, as many examiners are happy to accept someone else’s work, especially if that work comes from a reputable patent office like the European Patent Office.
Listen below for a deeper dive on PPH and the other options for expedited prosecution:
Non-expedited options for quicker patent issuance
Narrowing your claims
If you’re unable to expedite prosecution, you can potentially speed up the normal process by drafting the claims of your patent narrowly, although this is not necessarily advisable. By drafting very specific, very detailed claims you make it less probable that the examiner will discover prior art documents that alone or in combination teach or describe every feature of your “broad” claim, as the law requires them to do. A narrow claim can therefore potentially set the stage for a “first action allowance,” thereby saving you the lengthy and expensive process of a protracted prosecution. The obvious danger with this strategy is that you are likely excluding veritable patent scope surrounding your invention which in turn risks that a competitor can dodge your IP right with a simple change to your tech.
Finally, you might hear that a design patent is a quick way to score an issued patent. While indeed the fees and prosecution time on design patents are substantially less than that of a utility patent (i.e., what most people mean when they say a “patent”), design patents have a very different scope, format, and intended use than a utility patent. You can check out our previous blog post for more details on the nature of design patents, but the strategy here can be stated quite simply: only pursue a design patent if such a patent is actually of interest and value to your operation. Design and utility patents are different beasts and cannot be used interchangeably.
Only pursue a design patent if such a patent is actually of interest and value to your operation. Design and utility patents are different beasts and cannot be used interchangeably.
Proceed quickly, but do so with caution
Overall, there are a variety of means available to those who need a patent “fast,” with “fast” meaning within 12 to 24 months in this industry. Each of these methods has their nuances and complexities that this blog post could not fully describe, so regardless of which option you choose, please do consult with a patent practitioner before committing to any option.
Ashley Sloat, Ph.D.
Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey.