Guidelines To Step-Up The Patent Prosecution Process

August 26, 2022
- Intellectual Property (IP)
- Patent Prosecution

The patent prosecution process entails an interaction between the patent applicant and the U.S. Patent and Trademark Office (USPTO) in order to secure patent protection for an invention. It involves a series of negotiations with the Office to address any concerns regarding the patentability of the invention.

The process of patent prosecution has well defined rules but is often painfully slow and cumbersome. The pendency time for patent applications ranges between 22-23 months in the United States, with a rejection rate of 50%. So how does one escape the tedious waiting time and hasten the entire process? Below we discuss some tips and techniques that will help you obtain a patent quicker.

Reasons To Speed Up The Process

Businesses stand to benefit immensely by accelerating the patent prosecution process. Some of the advantages are:

Competitive Edge: Owning a patent gives you greater protection as well as makes the invention more lucrative compared to a patent pending status.
Raising Funds: Securing a patent makes your IP portfolio robust and attractive to investors.
Licensing: Licensing can be a sound means of earning revenue from your patent. If your patent has been issued, then you stand to gain an upper hand in licensing negotiations.
Patent Enforcement: Despite being aware of infringements, a patent applicant cannot assert patent rights till the time the patent has been officially granted.

Ways to Secure a Patent Faster

Track One

The USPTO’s prioritized patent examination program or Track One is created with the objective of giving applicants a final disposition within a short period of 12 months from the date of request.

The patent application process involves a thorough reading of the application and accompanying documents to determine if the invention satisfies all required criteria of being worthy of a patent. This makes it the most time-consuming step of all in the timeline of the patent application.

By paying an extra fee that ranges between $2K to $4K, applicants can avail themselves of the Track One benefit that prioritizes their application over others. The Track One program allows up to 4 independent claims and a total of 30 claims. The USPTO office accepts 10,000 applications in a year for the program and all details are notified on the website.

The program is beneficial as it has fewer document requirements, and a higher allowance rate, and accepts applications without pre-examination research. It is only available for plant and utility applications.

Communication With the Patent Officer

While virtual communication via emails is the most common form of interaction between the applicant and the examiner, it may not be the ideal approach. Written communication is laborious and open to misinterpretation, therefore face-to-face communication is the best way to expedite matters.

Applicants may interact with their examiners via phone calls, web conferencing or personal interviews. You can request an interview with the examiner by registering in the First Actions Interview Pilot Program. a person-to-person meeting is beneficial for both parties as it brings clarity to issues and overcomes any ‘lost in translation’ gaps.

PPH Program

The Patent Prosecution Highway or Prioritised Patent Examination Program is designed by the USPTO to allow for the entire patent application process to be wrapped up in 12 months or less. It speeds up the entire process considerably, thereby hugely benefitting the applicant.

Under the PPH program, the participating patent offices agree to fast-track corresponding patent claims pending in other offices, if one claim has been allowed by any office. This greatly simplifies the procedure and allows the applicant to reach the final disposition swiftly and efficiently. The PPH program is free but has the following eligibility:

Receiving an indication from a partnering PPH office of allowable subject matter
A common earliest priority is shared by the application with the indication of allowable subject matter and your USPTO application
Your USPTO patent application has not entered the examination phase

At present The European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People’s Republic of China (SIPO) are participating in the program. Thus, PPH helps expedite the patent securing process not just in the USA but internationally as well.

Special Petitions

Besides the two fast-track programs, the USPTO also makes exceptions under certain other circumstances to speed up the patent prosecution process. These are:

If the age of the inventor is 65 years or above.
If the applicant suffers from an illness that hampers their ability to participate in the prosecution process.
If the invention is deemed to help fight terrorism, better the quality of the environment, or aid in conserving energy resources.

Proper Documentation

Perhaps the simplest and most convenient way to accelerate matters is to be thorough with your documentation. Incomplete or erroneous submissions are amongst the leading causes of delay.

Adhering to guidelines can save you from the time-consuming to-and-fro and build a good rapport with the examiner as well. It is best to hire a patent attorney as they are qualified in the art of patent submission and possess the legal as well as technical expertise to make the process smooth and quick.

Conclusion

The USPTO has multiple patent applications to sift through on a daily basis. Therefore, it is up to you, the applicant to ensure that your application may receive priority over the others.

This can be fructified to some extent by following the above techniques. In matters such as these, it is best to hire expert help to benefit from their expertise in the filing process as well as the patent laws. While it is certainly possible to apply for a patent on your own, seeking the help of an agency can help you avoid commonly overlooked mistakes and guarantee better prospects for your application.

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