Faster Patents – Strategies for Expediting Issuance of United States Patents Django Andrews July 25, 2012 37 Offices in 18 Countries
Overview 37 Offices in 18 Countries
Overview 1. Case for expedited examination USPTO Statistics a. Examination overview b. 2. Available programs for expediting examination Special application programs a. Age/Health of Inventor i. Special Technology ii. Additional documentation or fee programs b. Accelerated Examination i. Track 1 Examination ii. Prior examination programs c. Patent Prosecution Highway Programs i. 3. Conclusions 3
Introduction The case for expedited examination 37 Offices in 18 Countries
Motivation for Faster Patent Rights • Known competitor infringing activity • Product launch • Anticipated litigation • Increase valuation Investment Merger / Sale • Participate in standard setting 5
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. 6
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 7
Available Mechanisms Overview 37 Offices in 18 Countries
Categories Additional Special Prior Documentation Applications Examination or Fees • Inventor Age • Track 1 • Foreign Patent Examination Office • Inventor Health • Accelerated • International • Technology* Examination Phase *None currently 9
Special Applications Overview 37 Offices in 18 Countries
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 11
Additional Documentation or Fee Programs Overview 37 Offices in 18 Countries
Additional Documentation or Fee Programs Accelerated Examination Significant petition documentation Track 1 Examination Pay a fee 13
Accelerated Examination Additional Documentation 37 Offices in 18 Countries
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 15
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 16
Prioritized (Track 1) Examination Additional Fee 37 Offices in 18 Countries
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 18
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 19
Prior Examination by PCT or Foreign Patent Office Patent Prosecution Highway Overview 37 Offices in 18 Countries
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 21
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 22
Patent Prosecution Highway (Cont.) Additional Program Requirements Requirement PPH 1.0 PCT-PPH PPH 2.0 Copy of Allowable Yes Yes No Claim(s) Copy of Office Yes Yes Yes Actions Translation* Yes Yes No Translation Yes Yes No Statement *Can be machine translation 23
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 24
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) 25
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 26
Patent Prosecution Highway (Cont.) Example 1: Corresponding Korean* Application Allowed File Korean Request Allowed National stage Examination Claims at 40 at 15 mo. at 18 mo. mo. File PCT Application File US PPH Request National at 41mo. Stage at 30 mo. *Average pendency of Korean patent applications is 24.6 mo. 27
Patent Prosecution Highway (Cont.) Example 2: Corresponding PCT Application Receives Favorable Written Opinion from EPO Acting as ISA Favorable Written Opinion* from EPO as ISA at 16mo. File PCT Application File US National Stage at 17 mo. with PPH Request *Could also be favorable IPRP 28
Conclusions 37 Offices in 18 Countries
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