One of the dynamics of being involved in IP law is the first-hand experience of the time involved in waiting for a patent to issue. With the current backlog at the U.S. Patent and Trademark Office (USPTO), it can take anywhere from 2-4 years to receive an initial examination. Even after that first examination it can still take another year or so to get a patent application in a condition for allowance, and ultimately issued. Given the fast-paced world of today, it’s no wonder inventors and patent owners alike find this snail's pace a grim experience, and often inquiring about any expediting options.
And, just like driving around stalled traffic in an HOV lane or the TSA PreCheck option over long lines at airport screening, indeed there are situations when one can do just that. But just because one ‘can’, does this mean one ‘should’? Especially when it comes to paying a premium, one really should consider patiently sticking with the status quo.
Options for Expediting Patent Examination with USPTO
There are a number of ways where one might find recourse to expedite examination of a patent application, including by ‘petition to make special’ for age, health, or other reason, some requiring a fee and some not. Two other prevalent paths for expediting are the Accelerated Examination program and the “Track One Prioritized Examination" (“Track One”) program. From its inception the Accelerated Examination program was useful, but quickly faded as the program of choice once Track One started. In contrast to Accelerated Examination and its rigorous requirements, Track One only requires a fee, a simplified Request document, and compliance with a few other minor conditions. Essentially any new non-provisional patent application can be filed on Track One.
The Pros and Cons of ‘Track One’
In the event a patent applicant wants to consider (or in the event one is being advised by an attorney to pursue) Track One, there are a number of pros and cons that warrant consideration.
First, the fee is quite high - $2000 for small entity and $4000 for large entity, which is in addition to regular filing fees. Even if granted special status, the status can be lost, and the fee may have to be paid again. The fee is even more problematic for those in or near startup. For new or fledgling businesses, the business decision of where to allocate resources is often critical. Sucking out a couple thousand dollars for expediting a patent application should be strongly weighed against other needs, which may include things like website development or ordering inventory.
Next, the expedited status comes without a guarantee. That is, the USPTO goal of the Track One program is not to grant patents as fast as possible; instead, it is to “aim to get to a final disposition (allowance or final rejection) of your patent application within 12 months of the prioritized status being granted.” What I tell clients this means is that the USPTO will put an expedited application at the top of the examination queue - but that’s about the only guarantee the applicant will get.
Another consideration is the unintended consequences of success. Sure, it is entirely possible to get a patent application filed and issued within 12 months - I have done it on several occasions, including by way of example for US Patent No. 9,010,411 - filed November 2014, issued April 2015 (~5 months of pendency).
But buyer beware of a number of detrimental side effects of fast issuance. First, by issuing an expedited patent, a patentee may have inadvertently closed themself off to pursuing a portfolio of patents. I have yet to come across a situation where one patent could be viewed as justifiably and exclusively being adequate to protect an idea. Normal portfolio management requires consideration, and indeed use, of regular continuation practice (i.e., having multiple patents issue from the original filed application). But any continuation application needs to be filed while the the previous application remains pending.
Also in this light, an applicant may inadvertently create prior art against itself. Normally a patent application will publish 18 months from a date of filing, at which point the publication can count as prior art against any new applications filed by the owner. A fast issuance moves that window up considerably. The 18-month publication blackout window can also be a prior art problem in another sense. Although the explanation is a bit complicated, the key takeaway is that by expediting your patent, you may leave it prone to subsequent challenge in view of prior art that was not yet known at the time of issuance. Or put simply that at the time of the expedited examination, the Examiner did not have all of the material prior art in front of him/her yet, whereas in a normal examination timeframe he/she would have.
Another point to keep in mind, and particularly thinking along the lines of a new business or product, is that the commercial reality may differ from what is initially claimed in a patent application. That is, at the time of the original filing, the claimed invention may be, as an example, a widget having features ABCD. But as a result of factors such as cost of manufacture or other patents, the commercial reality may end up being a widget having features BCDF that would not be protected by a patent that only protects ABCD. It may take years to bring an idea to market, and the premature issuance of a patent may leave an owner with little recourse to protect any changes that evolve over time.
There are some instances where Track One can be beneficial. First, an owner may have an agreement or investment opportunity contingent on the issuance of a patent. Two additional areas where I have found usefulness pertain to potential infringement and obtaining an indication of allowance.
Consider the situation where an invention has been disclosed in a pending patent application, but not yet claimed. Then a competitor comes along and starts selling a product that can have claims drafted in a manner where the use and sale of the product could be an infringement on properly drafted claims. Although a pending patent application cannot be converted to an expedited status, the applicant can simply file a new continuation application with a Request to expedite.
Finally, it may be that a company is considering foreign filing but is not sure the cost of pursuing rights outside the U.S. will be worth it. A favorable indication on allowance of an expedited application in the U.S. might help justify filing (within 12 months of the original filing) one or more PCT applications.
Receiving a patent is the desired outcome of any applicant. And while it may be understandably frustrating to deal with the backlog at the USPTO, it may very well be that strategic patience is the best approach. In addition to the cost, other factors may result in an unintended detriment to an applicant in the event examination of a patent application is expedited. Still, there are instances where use of a program like Track One can be beneficial.
If you have interest or concerns about whether you should expedite your examination, Rao DeBoer Osterrieder can discuss the pros and cons with you. Contact us for any questions you might have.
We look forward to speaking with you!
© 2017 John DeBoer
John DeBoer is a registered patent attorney, and admitted with the Texas State Bar. He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact John via Email.
The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.