Getting Patents Fast

Getting Patents Fast.

Most of the major patent offices of the world, including the USPTO, have programs for getting patents fast.  A typical patent may move through the system over several years, and 3-7 years is pretty typical.  However, these expedited programs can get the patent very quickly, sometimes within 9-12 months.

The USPTO has three systems for expediting patents.  The best system is called the Patent Prosecution Highway.  The next preferred system is Track One, and the system called Accelerated Examination is so hopelessly crippled that nobody should ever use it.

Special Status

The USPTO has a “Special Status” for certain patents.  Special Status is granted if the inventor is over 65 years old, as a courtesy to inventors who probably will not live to the end of their patent’s expiration.[1]

With Special Status, the case is on the examiner’s 10 day docket, and the examiner needs to process the case within 10 days.  In comparison, the examiner’s first action docket (where they pick up a case for the first time) can be three to five years long.

From the examiner’s standpoint, Special Status tends to disrupt their examination rhythm and, when the Special cases take a long time, make it really hard to reach their production goals.  In effect, examiners hate Special Status cases.

From the patent attorney’s standpoint, Special Status is a powerful tool for negotiation.  Examiners have extra incentive to move cases towards allowance so that the cases get off their irritating Special docket, and this provides an opportunity for the attorney to have a meaningful discussion with the examiner.

Couple the better negotiating position with the fact that the examiner must respond within two weeks on everything the attorney sends in, and patents will issue very quickly.

The expediting programs move a patent to Special Status.

All of the programs for expediting a patent application are ways to get Special Status.

In the case of Track One, the applicant merely pays a fee (typically in the range of $2,000-4,000) and the case is granted Special Status.  The catch is that the applicant gets Special Status for only two Office actions.  If the case cannot be allowed in that time, the case goes back to normal status.[2]

With the Patent Prosecution Highway, the case is granted Special Status for the entire time it is at the USPTO.  This includes going up on appeal.  The Patent Prosecution Highway is the premier way of getting Special Status.

The Patent Prosecution Highway is a program where Special Status is granted when another patent-granting authority says that certain claims are allowable, which is the justification for Special Status.  The fastest way to get this status is to file a Patent Cooperation Treaty (PCT) application.  This international application is examined quickly, and an International Search Report is generated in 3-6 months.

The cost of a PCT application is about the same order of magnitude as the USPTO’s Track One cost, yet the applicant cannot lose Special Status.

[1] There are several other conditions in which the Office will grant Special Status, but most of these conditions require a written petition with supporting documents.  The Office is notorious for taking so long to grant these petitions that the patents actually issue before the petition gets reviewed.

[2] Usually, the longest wait time is for the first examination, which will come very quickly on Track One.  The subsequent office actions, even if they are on normal status, will take 2-3 months to receive a response.

This is an excerpt from “Investing in Patents” by Russ Krajec.

Investing In Patents is available at Amazon.com.