How to Fast Track Patents in the U.S. and Globally

Authored by Linda J. Thayer

The patent process has gotten a bad rap in recent times. Skeptics question whether it is worth it to file for patents on fast-moving technologies like robotics when the patent may not issue for three or more years when the technology may already be obsolete or at a minimum surpassed. Recent developments in patent law before the Supreme Court, placing the validity of many existing patents in question, have not helped change this sentiment.

Does this have to be the case? Is there a way to have your patent application granted quickly? Fortunately, there are many techniques for expediting the process of obtaining patents from the U.S. Patent and Trademark Office (USPTO).

1. Know Before You Go (Ahead)

Well-drafted patents and claims have a much easier time succeeding before the patent office. Patent counsel that knows both the patent legal landscape and the technological field of your inventions well can help your inventors isolate the company’s crown jewels and craft claims to have just the right scope. Pre-filing searches can reduce costs in the short term by identifying applications that perhaps not be filed. If the decision is made to proceed with filing, pre-filing patent search results are also very useful in determining focus and patentable subject matter. While it is not possible to locate and pre-empt all challenges to validity, searching for and addressing prior art before filing will make for a stronger patent and help reduce the odds that your patent will be invalidated later on.

2. Use Track One Prioritized Examination

Once you have decided to file and identified key technologies, it pays to use the shiny new tools being offered by the USPTO. Touted as "America's competitive edge", the USPTO introduced in 2011 the new "Track One" program which provides accelerated examination to anyone who pays the fee, and completes the few requirements. The fee is $4000 for large entities, but only $2000 for small entities (those entities with less than 500 employees). Under Track One, the USPTO guarantees examination and issuance of a patent (if the invention is worthy) within one year. The author has obtained a patent in 8 months from filing, which is on par with the USPTO’s advertised average for this program.

Track One gives your application special status with fewer requirements than the current accelerated examination program and without having to perform (and explain) a pre-examination search, a requirement that plagued other types of prioritized examination. Applications may have only thirty claims, four independent claims, and no multiple dependent claims. Applicants also must agree not to take extensions of time. But if you are looking to accelerate grant of a patent application, this is a great option!

3. Interview the Examiner

Ideally, your well-drafted application speaks for itself, and the examiner understands immediately the novelty of your inventions. The written word, however, is rarely as effective as personal communication. To encourage patent applicants, through their counsel, to talk to and educate the examiners about the invention and the prior art in the relevant field, the Patent Office has initiated cost-free programs designed to advance compact and efficient prosecution. Under the First Action Interview Program, participants may talk to the examiner before the examiner issues a first communication. Such one-on-one conversations at the beginning of the prosecution process often facilitate early allowance of an application. As of July 2015, roughly 30% of all applications using this program were allowed after the interview. With no fee associated with the program, what’s not to like?

4.Use Allowances As Springboards to Build a Global Patent Portfolio

If your business is global, you may consider filing for patent applications in other countries. After you get at least one claim allowed in a first country, you may request accelerated examination in a second country by using the Global Patent Prosecution Highway (GPPH). Both countries must be members, but by July 6, 2015, the GPPH program included 21 member countries, including most robotics hotbeds. Using the GPPH, patent applications filed in Korea (after an allowance in the U.S.) enjoy higher allowance rates (89% v. 66%) and are granted more quickly (in 5 months v. 21 months). Applications filed in Japan after an allowance in the U.S. are processed much more quickly and issue in about seven months instead of over two years.

5. Fast Allowance Equals Competitive Advantage

Pursuing an aggressive strategy to obtain patents quickly can help a company develop (or maintain) a competitive advantage. Using the Fast Track program on a first application is especially helpful in determining the scope of patentable subject matter. The prior art found during the search and the examination process can steer subsequent applications in a fruitful direction, and these applications are then more likely to issue quickly too.

Issued patents can help companies get funding, or increase company value during acquisition. Issued patents can be a tool for erecting fences around a market segment. Even if your company is litigation-adverse, it is better to be the one building the fence than the one being fenced out.