Faster Patents Strategies for Expediting Issuance of United - - PowerPoint PPT Presentation

37 Offices in 18 Countries

Faster Patents – Strategies for Expediting Issuance of United States Patents

Django Andrews July 25, 2012

37 Offices in 18 Countries

Overview

3

Overview

• 1. Case for expedited examination

a.

USPTO Statistics

b.

Examination overview

• 2. Available programs for expediting examination

a.

Special application programs

i.

Age/Health of Inventor

ii.

Special Technology b.

Additional documentation or fee programs

i.

Accelerated Examination

ii.

Track 1 Examination c.

Prior examination programs

i.

Patent Prosecution Highway Programs

• 3. Conclusions

37 Offices in 18 Countries

Introduction

The case for expedited examination

5

Motivation for Faster Patent Rights

• Known competitor infringing activity
• Product launch
• Anticipated litigation
• Increase valuation
• Investment
• Merger / Sale
• Participate in standard setting

6

USPTO Average Pendency Statistics

• Original application, 33.6 mo.
• Varies by technology area

– Semiconductors, 30 mo. – Computer Architecture / Communications, 40 mo.

• Original application with RCE, 62.3 mo.
• Continuation application, 76.5 mo.
• Divisional application, 79 mo.
• Appeal, > 85.5 mo.

7

Examination Procedure

Regular Docket

• 14 mo. to first Office Action
• 4 mo. to issue subsequent office actions
• 3 years to issue
• No time frame for “final” disposition
• Final Office Action
• Allowance
• No guarantee Office will meet these deadlines (often do not)
• Results in the pendency above

Special Docket

• Applications examined out of turn
• Can result in significantly expedited prosecution

37 Offices in 18 Countries

Available Mechanisms

Overview

9

Categories

Special Applications Additional Documentation

• r Fees

Prior Examination

• Inventor Age
• Inventor Health
• Technology*
• Track 1

Examination

• Accelerated

Examination

• Foreign Patent

Office

• International

Phase

*None currently

37 Offices in 18 Countries

Special Applications

Overview

11

Special Applications

Age or Health of Inventor

• At least one inventor over 65 or health which indicates would not

be able to participate in entirety of prosecution

• Requires evidence of age or statement from physician
• No fees
• Can redact age evidence and medical statement

Technology-Based

• All existing programs now require submission under Accelerated

Examination Procedures

• environmental quality, energy, or counter-terrorism
• Past pilot programs have not been renewed
• Green technology program ended in FY 2010
• Possibility of more pilot programs in the future

Strategic Considerations:

• Health information of inventor likely to be very sensitive
• Accelerated Examination requirements are onerous

37 Offices in 18 Countries

Additional Documentation or Fee Programs

Overview

13

Additional Documentation or Fee Programs

Accelerated Examination

• Significant petition documentation

Track 1 Examination

• Pay a fee

37 Offices in 18 Countries

Accelerated Examination

Additional Documentation

15

Accelerated Examination

Requirements

• Original application (no PCT)
• File complete application electronically
• Specification, claims, drawings, oath/declaration, all fees
• No more than 3 independent and 20 total claims
• Single invention (cannot argue against restriction requirement)
• Petition form and fee ($120.00)
• Examiner-requested interview
• Pre-examination search
• Essentially same search as USPTO would conduct
• Submit search documentation
• Accelerated Examination Support Document
• Provide reasoning why claims are:

– Patent-eligible subject matter (101) – Supported by specification and drawings (112) – Novel and non-obvious over all search references

16

Accelerated Examination (Cont.)

Procedure

• Application goes to front of Examiner’s queue
• First action contains all issues relating to patentability
• Must reply to first action within one month
• Next action will be Final or Notice of Allowance

Strategic Considerations:

• Significant attorney cost
• Additional admissions and characterizations on the record
• 82% have been granted as of April 2012

37 Offices in 18 Countries

Prioritized (Track 1) Examination

Additional Fee

18

Prioritized (Track 1) Examination

Requirements

• Original, continuing, or RCE application
• Timing
• Original and continuing applications: upon filing
• RCE application: before first action
• File complete application electronically
• Specification, claims, drawings, oath/declaration, all fees
• No more than 4 independent and 30 total claims
• No multiply dependent claims
• Additional examination fee ($4,800), processing fee ($130),

and early publication fee ($300)

• Maximum 2 prioritized examination requests per application
• 1 on filing and 1 with RCE
• Limit to 10,000 petitions for prioritized examination per fiscal

year

• 3673 filed through June 18, 2012

19

Prioritized (Track 1) Examination (Cont.)

Examination

• Special docket throughout examination
• Provide “final” disposition 12 months after special status granted
• on average
• Final disposition includes:
• Final Office Action
• Notice of Allowance
• Notice of Appeal
• RCE filing
• Abandonment
• Normal response periods
• No extensions of time

Strategic Considerations:

• Cost
• 85% grant rate as of June 2012

37 Offices in 18 Countries

Prior Examination by PCT or Foreign Patent Office

Patent Prosecution Highway Overview

21

Patent Prosecution Highway

Overview

• Leverage successful prosecution in International Phase or by

foreign patent office to expedite prosecution in U.S.

• Series of agreements have created many permanent and pilot

programs

• Permanent Bilateral Programs
• Bilateral Pilot Programs
• Bilateral PCT Pilot Programs
• PPH 2.0 Program
• U.S. PPH applications have an 87% grant rate compared to

49% grant rate for non-PPH applications

22

Patent Prosecution Highway (Cont.)

General Program Requirements

• Claims allowed in foreign patent office (or PCT) are substantially

the same as claims pending in U.S.

• U.S. and foreign applications must share a priority document
• U.S. examination has not begun
• Submit claims correspondence table
• File request
• No Fees due
• Information Disclosure Statement and References
• Unless previously submitted
• Electronic submission
• Provisional applications, plant applications, design applications,

reissue applications and applications subject to a secrecy order are not eligible

23

Patent Prosecution Highway (Cont.)

Additional Program Requirements Requirement PPH 1.0 PCT-PPH PPH 2.0 Copy of Allowable Claim(s) Yes Yes No Copy of Office Actions Yes Yes Yes Translation* Yes Yes No Translation Statement Yes Yes No

*Can be machine translation

24

Patent Prosecution Highway (Cont.)

PPH Program Examination Procedure

• Application granted special status
• Lower priority than Accelerated Examination and Track 1 Examination
• U.S. claims must correspond to allowed foreign or PCT claims at

all times

• Any claim amendments during prosecution require correspondence

table and statement

• All subsequent foreign Office Actions (with translation) must be

submitted to USPTO

25

Patent Prosecution Highway (Cont.)

PPH Programs

• Permanent Bilateral Programs

– Canada – Hungary – Israel – Japan – Korea

• Bilateral Pilot Programs

– Austria (on-going) – China (set to expire November 30, 2012) – Denmark (on-going) – European Patent Office (set to expire January 29, 2013) – Finland (set to expire January 29, 2013) – Germany (set to expire April 26, 2013) – Iceland (set to expire November 30, 2012) – Mexico (set to expire August 31, 2012) – Norway (set to expire October 31, 2012) – Singapore (on-going) – Taiwan (set to expire August 31, 2012)

26

Patent Prosecution Highway (Cont.)

PPH Programs (Cont.)

• PPH-PCT Programs

– Australia (on-going pilot) – Austria (on-going pilot) – China (set to expire November 30, 2012) – European Patent Office (set to expire January 28, 2014) – Finland (set to expire January 23, 2013) – Japan (set to expire January 28, 2014) – Korea (permanent) – Russia (on-going pilot) – Spain (set to expire September 30, 2013) – Sweden (set to expire May 31, 2013)

• PPH 2.0 Pilot Program

– Multilateral – Australia, Canada, European Patent Office, Finland, Japan, Russia, Spain,

U.K.

– Runs until January 29, 2013

27

Patent Prosecution Highway (Cont.)

Example 1: Corresponding Korean* Application Allowed

File PCT Application File Korean National stage at 15 mo. File US National Stage at 30 mo. Request Examination at 18 mo. Allowed Claims at 40 mo. PPH Request at 41mo. *Average pendency of Korean patent applications is 24.6 mo.

28

Patent Prosecution Highway (Cont.)

Example 2: Corresponding PCT Application Receives Favorable Written Opinion from EPO Acting as ISA

File PCT Application Favorable Written Opinion* from EPO as ISA at 16mo. File US National Stage at 17 mo. with PPH Request *Could also be favorable IPRP

37 Offices in 18 Countries

Conclusions

30

Conclusions

• 1. Special Applications

a.

Take advantage of age of inventor program

i.

Consider health of inventor program b.

Watch/lobby for technology-based programs

• 2. Accelerated Examination

a.

Use with caution

• 3. Track 1 Examination

a.

Consider for high-priority inventions

• 4. Patent Prosecution Highway Programs

a.

Require planning for best strategic use

b.

Consider at portfolio level

c.

Can accelerate foreign prosecution as well

37 Offices in 18 Countries

Thank you.