Accelerating Your Patent Application

 

By Tom Tuytschaevers, a member of our Patent Practice Group

 

P

atent applicants often react with impatience and exasperation as they count the months, then the years, before their application runs the gantlet established by the U.S. Patent and Trademark Office (the “PTO”).  The attached chart illustrates that several ways to accelerate the process are available.

The delay

 

The PTO typically issues at least one “office action” that rejects the patent claims, or otherwise objects to aspects of the application.  The applicant’s response to the office action may resolve the issues raised by the PTO, or may beget another office action.  The duration of this “prosecution” process depends, in part, on the number of rounds of this correspondence.

Another significant time factor, however, is the wait between the application filing and the time the PTO issues its first office action.  Patent applications are examined on a first-come first-served basis, and the wait for this first action on the merits is frequently more than two years. The PTO’s 2010 Annual Report revealed that the “Patent Average First Action Pendency” was 25.7 months.

In addition, the 2010 PTO data on “Total Average Pendency” (i.e., the time between filing the application and the time a patent is allowed or when the application is otherwise finally disposed) was 35.3 months, with applications in some technology areas taking much longer: Three of the PTO’s technology centers each had total average pendency of over 42 months!  Such time horizons may conflict with the needs of the applicant. 

 

The acceleration

 

Fortunately, as shown in our chart, there are a number of ways by which the examination of a patent application can be accelerated, or “advanced out of turn,” in PTO parlance.  In addition, the PTO goal for some such accelerated applications is to reach a final disposition within 12 months.

Thus, being “advanced out of turn” stands to reduce the wait for a first office action and, by itself or together with the PTO’s goal of reaching a final disposition within 12 months, stands to significantly reduce the time between application and patent. 

Some of these programs are meant to advance policy goals and may require certain showings; others simply require an extra fee. 

For example, some options require a petition to “make special,” and some require a supporting statement of how the application meets the requirements for advancement.  Several programs have additional requirements and/or limitations (e.g., application filing dates; number of claims, etc.).  Some are permanent programs, while others are subject to limitation based on date, and/or on the total number of applications processed. 

These programs are subject to change.  For additional detail on the requirements and limitations of each program, please contact the author at ttuytschaevers@sunsteinlaw.com.