How to Get A Patent Quickly
With the U.S. patent office deluged with patents, and the pace of display technology innovation ever increasing, display pioneers with new inventions may want to consider the Accelerated Examination process.
by Steve Murray
DISPLAY TECHNOLOGY is a fast-moving industry. For example, large-screen television technology has exploded over the last decade as companies introduced thinner and thinner sets with larger and larger screen areas. Now, just as high-definition television is becoming the norm, a new generation of 3-D televisions has hit the market.
As a result of such fast-paced development, display pioneers need to protect their inventions as quickly as possible. Unfortunately, the United States Patent & Trademark Office (PTO) is inundated with hundreds of thousands of patent applications each year, and the applications are examined in each relevant field on a first-come, first-served basis. A well-publicized backlog of applications has led to a delay in patent issuance.
In 2009, according to the PTO, a patent application sat in a queue for 25.8 months, on average, before being initially reviewed by a patent examiner. The total average pendency (i.e., the time period from filing to issuance of a patent or abandonment by the applicant) of an application in 2009 was estimated to be 34.6 months, or just under 3 years. This number has grown from an average of 29.1 months in 2005. These numbers do not even begin to tell the whole story. Some art fields, particularly those involving complex technology, have longer pendency periods. For example, the technology center for Computer Architecture, Software & Information Security has a total average pendency of 40.7 months.
Although provisions exist to compensate a patent owner for PTO delays during prosecution of the patent, the result is only an extension of the patent term at the back end. This is of little value to a patent owner if the technology claimed is already obsolete by the time the patent issues.
Fortunately, the PTO allows for a "Petition to Make Special," wherein an applicant can have the application examined out of turn. An application may be taken out of turn if (i) the applicant is over 65 or is in a state of health such that the applicant might be unable to assist in prosecution if the application should proceed to run its normal course, (ii) the application was first filed in a particular foreign country and received a ruling favorable to patentability in the foreign country; or (iii) the application complies with the requirements for "Accelerated Examination."
Options (i) and (ii) are not available to the vast majority of patent applicants. Thus, the most promising method for speeding up patent prosecution in the U.S. is to take advantage of the "Accelerated Examination" program. The goal of this program is to complete examination within 1 year of the filing date of the application, which is a much more welcome time frame than the nearly 3-year average pendency (see Fig. 1). A petition must be filed and granted by the PTO in order to receive an accelerated examination.
Fig. 1: The average pendency time frame for a non-accelerated patent application is about 3 years.
Accelerated Examination Requirements and Procedures
Of course, there is a catch to the Accelerated Examination program, which is that the applicant must meet several stringent requirements in order to have the petition granted by the PTO. Among the most important requirements is that the applicant must conduct a detailed search of U.S. patent and published applications, foreign patent documents, and non-patent literature for the claimed invention. Once the references most closely related to the subject matter of the invention are located, the applicant must provide a detailed explanation as to why the claims (the portion of the patent that delineates the scope and boundaries of the invention) are patentable over each reference. Essentially, the applicant is performing one of the examiner's tasks; namely, locating the closest and most relevant "prior art," which helps to streamline the examination process down the road.
If the petition is granted, prosecution of the patent application proceeds as it would normally, but on a much faster schedule. The examiner will review the claims and the cited references, do some further searching, and then either allow or reject the claims. Often the examiner will request an interview with the applicant to discuss any issues the examiner has identified, in an effort to either get the claims in condition for allowance or to focus or narrow down the issues that will be addressed in a formal rejection. If any claims are rejected, the applicant has 1 month to file a response, which may include amendments to the claims. The examiner reviews the response, and then, if all goes well, allows the claims, although other rejections may issue. If the examiner issues a final rejection, the applicant can request further examination, but the further examination will not necessarily be on the accelerated timetable. However, this may not always be objectionable since the bulk of the pendency of an application is awaiting the first action by the PTO.
There are pros and cons associated with an Accelerated Examination. Perhaps one of the largest negatives is the up-front cost. The cost for filing a patent application includes PTO fees and fees incurred by a patent attorney or agent. Preparation of the petition piles on more costs. For example, to meet the demands of the PTO in terms of searching the prior art, a professional search firm is typically employed. A search performed by a reputable patent searching firm for purposes of an Accelerated Examination petition will often cost several thousand dollars. Once the results are received, the patent attorney or agent needs to review each reference to determine how the claimed invention differs from each of the references. The attorney or agent then must prepare the documents in support of the petition, which can be extensive depending on the nature and complexity of the invention. The up-front cost can sometimes total as much as the cost of preparing the patent application.
Patent applications in the Accelerated Examination program are also limited in the number of claims that may be presented. The applicant can file no more than three independent claims and 20 or fewer total claims. While this number of claims should be sufficient in most instances, certain features may have to be omitted from the set of claims in order to meet these limits.
The applicant is also limited in the amendments that can be made to the claims during examination. If the applicant wishes to amend the claims during prosecution by introducing a new feature, then the search must be updated, which can be difficult given the time constraints imposed for responding to rejections. An applicant normally has a period of 3 months to file a response with the PTO and can obtain three more months of extension upon payment of a fee, but in the Accelerated Examination process, the applicant has only 1 month (non-extendable) to file a response.
Lastly, petitions are meticulously inspected by the PTO, and therefore require careful preparation by the applicant. Petitions can be denied for any number of formalistic reasons, such as inadequacy of search, failure to recite certain phrases, or the like. Once a petition is denied, an applicant has only a limited number of opportunities to correct the deficiencies before the application is placed back on the regular schedule.
Accelerated Examination Has High Success Rate
On the positive side, however, patents are issuing at a much faster rate under Accelerated Examination. The PTO is meeting or exceeding the expected 12-month goal for concluding prosecution. Even better, of the applications that have completed prosecution under the Accelerated Examination program, 71% have issued as patents. Compare this with the 44% allowance rate of all applications in 2009 (see Fig. 2). By filing under the Accelerated Examination program, an applicant's patent is much more likely to be allowed.
Fig. 2: Percentage-wise, accelerated patent examinations fare better in terms of allowance rates than their non-accelerated counterparts.
One reason for the higher allowance rate is that the applicant has a better idea of the state of the prior art and the most closely related references before filing the application. For a regular (non-accelerated) application, an applicant is not required to search the prior art. While many applicants commission patentability searches, such searches are typically not exhaustive, and the applicant is often surprised by references located by the examiner. By performing a much more intensive search up front, the applicant is in a better position to know where the boundaries of the patent protection should be set, rather than taking wild stabs in the dark.
A further benefit derived from Accelerated Examination is that the overall cost of obtaining the patent may be less. As described earlier, the cost for taking an application out of turn is very front-loaded. However, as a prosecution drags on for several years, the cost can climb substantially, particularly where the examiner issues several rejections. Under the Accelerated Examination program, with the PTO and the applicant working toward concluding prosecution within 12 months, and with the most relevant references already known, the rejections and responses are much more focused and succinct. In the long run, filing for Accelerated Examination may actually save money.
New Application Tracks Proposed
Very recently, the PTO has proposed a new scheme in which an application can be placed into one of three tracks: (i) prioritized examination; (ii) conventional examination; and (iii) delayed examination. Entrance into the prioritized examination track would require only the payment of a fee to the PTO. Unlike the Accelerated Examination program, no search would be required, so the examination process itself would not necessarily be quicker; it would just start sooner.
It is unclear at this point if or when the PTO will implement this proposed three-track procedure. Hopefully, the PTO will retain the Accelerated Examination process as an option for applicants because it not only reduces the pendency prior to initial review by the examiner, but also speeds the examination process itself.
The option for obtaining a patent quickly is definitely available. The questions to consider are whether getting a patent issued as soon as possible is worth front-loading the cost and putting in the extra effort required to make it happen. If the technology will be obsolete in 3 or 4 years, or if a competitor is expected to copy the invention immediately, this option should definitely be investigated. •