Manipulating the Time it Takes to Get a Patent, Legally!May 23, 2022

A common question I am commonly asked is: How long will it take for me to get a patent?

The answer is it depends. There are a few factors.

Some art units are faster to examine patent applications than others. Some Examiners issue more communications, known as Office actions, than others. If an Examiner mails two or more Office actions, the Applicant may have to file a Request for Continued Examination (RCE). The USPTO reports the average pendency of applications with at least one RCE is 45.6 months.

If you believe the average pendency at the USPTO is much too long, you’re in luck. The USPTO has provided patent applicants several unique avenues for speeding up the examination process. Gaining an issued patent quickly can be important to those applicants who are seeking to immediately pursue competitors for making, using, and/or selling their inventions.

As an example, Track One Prioritized Examination is the most utilized option for expediting the examination process. Under Track One prioritized examination, applicants are required to submit a petition for prioritized examination at the time of filing with payment of an ‘urgency fee.’ The Track One examination process offers a significantly expedited timeline as compared to the standard examination process: the resulting effect of a successful petition is that examination time is reduced from approximately 2-4 years to just 7-12 months.

But, what if you don’t want to be at the mercy of the normal process and don’t want to speed it up, but slow it down? Well, you’re still in luck. One great option to do slow down examination is to first file an international patent application (PCT application) instead of first filing a U.S. patent application.

The World Intellectual Property Organization allows for Applicants in Patent Cooperation Treaty (PCT) participating countries to preserve their priority date on a near-worldwide basis for up to 30 months from the priority date. Under the PCT, one international patent application is filed with a qualified Receiving Office (such as the USPTO) and one patent Office is designated as an International Searching Authority (ISA). The examination process from this procedure can thus increase the time it takes to procure a U.S. patent from the standard 2-4 years to 3-6 years.

One benefit of filing a PCT is that the ISA will issue an International Search Report and Opinion, which functions much like a first Office action on the merits. If this opinion is favorable, examination can often be expedited in many member countries through a program known as the Global Patent Prosecution Highway (GPPH). Even Applicants that had initially slowed the examination process down may therefore be presented with a later option to speed the process up again.

A record number of international patent applications (PCT applications) were filed last year, indicating that the process of first pursuing an international patent application in lieu of pursuing only a domestic one is being increasingly recognized as the best strategic option for many companies around the world. Specifically, the UN’s World Intellectual Property Organization has reported 277,500 international patent applications were filed in 2021, marking a 0.9-percent increase from 2020.

At times, procuring intellectual property rights can have very strict deadlines. At other times, these timelines are highly flexible. It helps to identify business objectives and any potential hurdles to procuring IP rights early in the procurement process.

MVS attorneys are experts in guiding our clients through the timing of procuring complex intellectual property rights. We therefore welcome IP questions regarding all things strategic!

Gregory Lars Gunnerson is an Intellectual Property Attorney in the Mechanical and Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Lars directly via email at gregory.gunnerson@ipmvs.com.