Today, we’re going to talk about the timeline involved with getting a patent application through the system. Hopefully, you’ve already got your different types of intellectual property straight, and you’ve found a patent attorney you love working with. If not, click on those links!
So. What if you want to patent your invention in less than a year? Is that even possible? Is there some way to expedite the process? Short answer: “yes.” Long answer: “it depends.”
What’s the Baseline?
First, we’ll need to get very clear on what the “normal” patent application process looks like in the United States, from a timing perspective. Bottom line: it takes a very long time. Like, multiple years. If you’re new to the process, that can be a shock. However, the reality is that once you file a nonprovisional patent application, it’s typically 16-20 months before you even get an initial response from the Patent Office. If you file a provisional application first, that generally adds a year to the front end of your process.
Here’s what the standard nonprovisional patent timeline looks like:
And here it is with a provisional filing included:
There are other “standard” options available, and you should definitely discuss them with your patent attorney. However, the other options tend to take even longer than those above.
Importantly, the back-and-forth that happens during the patent examination process can take many many months once it begins. Each time the Patent Office sends you a rejection or other communication, you get two or three months to respond, usually extendable for up to six months. The examiner can also take months to reply to each of your responses, depending on workload. So you can see how this adds up. Side Note: This portion of the process is usually referred to as “patent prosecution,” which can create confusion when you’re discussing things with your attorney. Just remember that, in the patent world, prosecution and litigation are two very different things.
Is There a Way to Speed This Process Up?
Luckily, there are several ways to significantly shorten the timelines above. However, let’s consider whether that’s always a good idea.
Some reasons you might not want to speed up the patent process:
- Shortening the wait time means your prosecution-related expenses will happen sooner, rather than being spread out over several years.
- If the law is currently unfavorable to the patentability of your particular type of invention, it might be good to let the process play out over time and see if the law changes. (However, for many reasons, you cannot usually wait to file your patent application.)
- If it’s currently just as valuable for your company to state you have a “patent pending” as it is to have an issued patent, then there may be no reason to expedite things.
- The costs involved may not be worth it, from a business perspective.
Assuming you’ve thought everything through with your patent attorney, here are a few of the options for expediting the patent process.
Ways to Expedite Your Patent Application:
1. Pay for Prioritization. The most straightforward method (at the moment) is to pay the USPTO to prioritize your application. The Patent Office has a program where, in return for a fee, your application will be prioritized ahead of others. It’s officially known as the Track One program. The “guarantee” is that you will receive what amounts to a final answer within twelve months. In my experience, that has meant that an initial response from the USPTO is usually received in two to six months. Here’s what that looks like, compared to the above timelines:
As you can see, it’s a lot faster.
So, what’s the cost? Currently, companies with less than 500 employees will pay $2,070 to prioritize an application at the USPTO. If you have more than 500 employees, it will basically be double that amount. Either way, it can be well worth it if you’re trying to build a portfolio or establish the right to go after infringers. CAUTION: If you want to prioritize, you must do so at the time you file the application! It can’t be done later. There is another opportunity after your application has been rejected two times, but that means you still have to get through the usual, lengthy process.
2. Petition to Make Special. There are a few situations where you can file what’s called a “petition to make special,” requesting that your application be given head-of-the-line privileges. If approved, your application will be placed ahead of those applications that are on the normal path. You won’t get the twelve-month guarantee of the Track One program. However, in my experience, it’s about the same level of expediting. Better yet, this method requires NO FEES at the USPTO. However, you do have to qualify for one of the approved categories. Here are the basic categories:
a. Age. Currently, the easiest and most common category is a petition to make special based on age. If any one of the inventors is 65 or older, tell your attorney and get this petition filed!
b. Illness. If the health of any one of the inventors is “such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course,” then you can also file a petition to expedite the prosecution process.
c. Type of Invention. There are three types of inventions that can support a petition to make special, regardless of the status of the inventor. You can file a petition if your invention (i) enhances the quality of the environment, (ii) contributes to the development or conservation of energy resources, or (iii) contributes to countering terrorism.
What’s cool about these petitions is that, unlike Track One, the Patent Office doesn’t charge you a fee. And you can file one at any time. (Be sure to check this though – rules change).
3. PCT to PPH. This one’s a little trickier. Basically, you can use the results of an international process to expedite your US application.
Some background is in order. If you file what’s known as a PCT application, sometimes called an “international application,” you can preserve your right to obtain a patent in over 150 countries. The deadline to file a PCT application is one year after any filing in the US. Accordingly, they’re often filed simultaneously with a US nonprovisional application.
An associated program is the Patent Prosecution Highway (PPH). The PPH program can be used to expedite your patent application in a second country if you’ve already obtained a patent in a first country. For example, if you get your US patent allowed, you can then use the PPH program to expedite your Canadian application. I won’t go into those details, because there’s another situation that’s more applicable to the question at hand.
As part of the PCT application process, about four months after filing you’ll receive an International Search Report (ISR) and Written Opinion (WO). This is just a standard preliminary report of the international search authority’s findings regarding patentability. It has no real substantive effect on your application. However, if it’s favorable, meaning at least one of your patent claims was determined to be patentable, then you can use that ISR and WO to expedite your US patent application! This is referred to as the PCT-PPH program.
Essentially, if your ISR and WO contain good news, you can file a Request for Participation under the PPH program, and get your US application moving much faster. Again, there’s no twelve-month guarantee, but it also doesn’t cost anything extra. There are some requirements that you’ll need to be sure to meet. For example, the claims in your US application have to be identical to those that were deemed okay by the ISR. As always, talk it over with your patent attorney.
There you go! Three ways to get a US patent in less than a year. Hopefully, one of these will work for your situation. Regardless, there are more options I haven’t covered, and some can even be combined or done in sequence. Also, programs come and go, and rules change, so be sure to discuss all of your options with your attorney. Let me know if you have any questions!
Blog Post © 2018 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.