By Andrea Dick
If you have filed a patent application in recent years, then you know it can to take up to two years to receive a first action from the United States Patent Office (USPTO) and a year or more after that for the patent to be granted … or rejected.
The patent office is seriously backlogged to the tune of 1.2 million unexamined applications.
Before the Senate deliberated and approved in March patent reform legislation now known as the America Invents Act, USPTO Director David Kappos had proposed several initiatives to expedite processing of patent applications. As of this writing, the House was deliberating its version of patent reform.
Meantime, here’s a look at the proposals Kappos hopes will help reduce the backlog.
3-Track Proposal (June 2010)
The 3-Track proposal allows applicants to select one of three different types of processing for their applications, giving the PTO a way to prioritize examination based on an applicant’s needs.
Applications can be expedited and receive an accelerated examination (Track 1), have the normal examination (Track 2) as they receive today or be delayed (Track 3) and have a slowed examination process.
Accelerated Examination. For an additional fee, applicants may request expedited examination for an application. The goal is to grant a patent or reject it within 12 months. To qualify the application must be an original utility or plant non-provisional application; be filed electronically (EFS-Web); have no more than four independent claims and a maximum of 30 total claims.
Normal Examination. Normal examination is the process used by the USPTO today. Applications are examined in the order in which they are filed. Existing fees apply.
Delayed Examination. Delayed examination gives an applicant up to 30 months to defer the start of the examination process. At any point during the 30 months the inventor can trigger entry into one of the other tracks by paying the initial examination fee. Payment of fees is delayed until examination begins. There are circumstances where delayed examination is desirable and it can save inventors money by delaying payment of fees.
Fast Track Proposal (February 2011)
On Feb 4, 2011 the USPTO recommended that the Accelerated Examination Track of the proposed 3-Track program be implemented immediately.
Initially up to 10,000 applications were to be accepted for an additional fee of $4,000. Public comments for the proposal were due on March 7. This proposed initiative could be enacted before the end of the year.
The additional fee is potentially high for small businesses and individuals and the America Invents Act includes a recommended reduction in this fee for small businesses and individuals.
Green Technology Pilot Program
The goal of the Green Technology Pilot Program is to accelerate creation of environmentally friendly products, technologies and jobs by helping companies obtain patents they need to secure funding and get to market more quickly.
Applications that relate to the development of a renewable energy, energy conservation or the reduction of greenhouse gas emissions are required to qualify for this program.
These applications can have no more than three independent claims and no more than 20 total claims and need to be filed electronically (EFS-Web).
The program does not require additional fees. However, the applicant is required to request early publication, which requires a $300 fee. This program is accepting the first 3,000 applications submitted through December 2011.
Patent Prosecution Highway
The Patent Prosecution Highway (PPH) program expedites examination of patents filed in multiple countries.
U.S. patents are eligible for the PPH after the patent has been examined and allowed by a foreign patent office. Because the U.S. patent office is able to re-use and share data from the initial examination by the first patent office they are able to perform an accelerated examination.
The USPTO promises a 12-month examination for PPH patents. The program requires that the claims in the U.S. application directly correspond to claims in the allowed foreign application and that the allowed application be translated into English.
Final Thoughts
When filing your patent application, determine whether one or more of these proposals makes sense for you.
The expense associated with the Track-1 accelerated examination, when it is available, may be hard for small businesses and individuals, especially for startups.
Keep track of the proposed patent reform bill. It is likely to reduce fees for small entities by 50%. However, if obtaining a patent as soon as possible is important, then the additional payment may be necessary. Reminder, only the first 10,000 applications will be accepted under this proposal.
With delayed examination you are able to file an application and receive an early filing date for no fee. At a later time when funding becomes available, the examination fee can be paid and the application can enter an accelerated or normal examination track.
If you plan or need to file for patents beyond or outside the United States, then PPH is a good choice.
Research the jurisdictions that are known to prosecute patents quickly and if one of them is a locale where you intend to file, file in that country first and then in the United States. Once the patent is allowed in the first country, you will be eligible for the PPH program, which involves a 12-month examination process.
Visit www.uspto.gov
Editor’s note: This article appears in the May 2011 print edition.
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