Authored by: Alec Schibanoff, Executive Director, American Innovators for Patent Reform, New York City, N. Y.
Edited by Stephen J. Mraz, [email protected]
Resources: American Innovators for Patent Reform, www.aminn.org
Tips for quickly securing a patent.
The time it takes an inventor to secure a U. S. Patent currently averages over three years. But for patent applicants who want to speed up the process, here are some practical tactics that can wring a few months — maybe even several months — out of the application process.
1. Applying for a patent is a highly complex process, so it’s wise to hire a patent practitioner to help secure your patent. Professional help can be critical in getting a patent on a timely basis as well as ensuring it has the broadest claim coverage. Professional practitioners, patent agents, and patent attorneys who are registered with the U. S. Patent and Trademark Office (USPTO), are trained to help inventors and companies prepare, file, and prosecute applications. (American Innovators for Patent Reform offers a free patent agent and attorney referral service at its Web site, www.aminn.org.)
2. Apply as soon as possible, even if the invention is not completed. A patent agent/attorney can guide you here. But it goes without saying that the sooner you apply, the sooner you are likely to get a patent. You do not need to be ready to bring your invention to market before applying for a patent, as some inventors incorrectly assume. Get your application in the system, and while it works its way through the process, work on getting the invention ready for market by addressing issues such as packaging, pricing, parts and accessories, distribution, advertising, and branding. If you plan on licensing your patent rather than using your invention in a product or service you offer for sale, you should not talk to potential licensees until you’ve received your patent or you are represented by an experienced patent-licensing professional.
Waiting too long to apply for a patent can have devastating consequences. There are certain events that, if they happen more than one year before the application filing date, will strip an inventor of patent rights. For example, if the invention was published, put on sale, or publicly used more than a year before filing with the USPTO, the inventor cannot patent it.
3. Submit all required and useful documentation with the application. Don’t be careless. If you don’t provide the required documents, you can incur extra filing fees for delay or, in case an omission is critical, not get a filing date. If there’s the slightest indication a supporting document will useful to the USPTO, it is a good idea to submit it rather than risk delay.
It’s also the applicant’s legal duty to disclose to the patent office any potential references to prior art he knows. If an inventor skips this step, he or she can be charged with “inequitable conduct,” which could lead to the patent being invalidated.
4. Applicants have a 90-day deadline to respond to USPTO actions, and that deadline can be extended up to six times in 30-day increments, giving the applicant up to nine months to respond. But why ask for extensions? In fact, why take 90 days to respond? Make sure your patent agent/attorney knows you want them to respond immediately to every Patent Office action, and that you will drop whatever you are doing to give them whatever information or documentation is needed. If it is an option, interview the patent examiner about his decision; it can accelerate the review process. Responding quickly to each Patent Office action can wring months out of the application process.
5. Mark the product(s) that would use your patent with “Patent Pending” as early as possible. This doesn’t actually speed up the application process, but it does give you an earlier point of patent protection if you plan on building and selling or licensing your invention. Consider filing a Provisional Application because doing so lets a “Patent-Pending” notice be marked on the product. This could deter potential infringers and might make competitors think twice about coming to market with competing products.
6. Go for a few key claims rather than many and make sure your patent effectively protects your invention. As a rule, it’s better to secure a few independent claims for an invention than try to have a patent include many dependant claims. When building claims into a patent, quality is more important than quantity. A few key independent claims will make a patent easier to license and easier to defend should you end up as the plaintiff in a patent-infringement lawsuit. And including fewer claims may shorten the Patent Office’s examination time.
7. If possible, apply under the Green Technology Program. This tactic does not apply to all inventions. But if it applies to yours, it could speed the patent process significantly. Currently in its pilot phase, the Green Technology Program expedites the first 3,000 petitions for special status and is scheduled to end December 8, 2010 (but it could be extended). To qualify for review acceleration, applications must pertain to the USPTO’s definition of “Green Technology,” which it recently broadened to encompass more submissions. Specifically, the invention must enhance the quality of the environment, contribute to the development of renewable-energy resources, lead to more efficient use and conservation of energy resources, or reduce greenhouse-gas emissions. Under the fast track program, Green patents can get a first USPTO action within 16 months.
8. Take advantage of the Patent Prosecution Highway (PPH), which is germane if you intend to apply for patents in other countries. Under PPH, inventors apply for a U. S. Patent and then a foreign patent. It lets the examination done by the USPTO be used by the other countries’ patent agencies to eliminate redundancy and save time when the patent is reviewed there. This only applies to patent-granting agencies that are parties to the Patent Cooperation Treaty, and they include:
▶ Australia (IPAU, pilot but extended until further notice)
▶ Canada (CIPO, pilot but extended until January 28, 2011)
▶ China (SIPO, agreed to pilot but in planning stages)
▶ Denmark (DKPTO, pilot but extended until further notice)
▶ Europe (EPO, pilot but extended until September 30, 2010)
▶ Finland (NBPR, pilot but extended until further notice)
▶ Germany (DPMA, pilot but set to expire April 27, 2011)
▶ Hungary (HPO, pilot set to expire July 1, 2011)
▶ Japan (JPO, permanent)
▶ South Korea (KIPO, permanent)
▶ United Kingdom (UKIPO, pilot but extended until further notice)
▶ Singapore (IPOS, pilot but extended until further notice)
The recently proposed Three-Track Program, if adopted, would let inventors expedite their patent applications. The program has three options inventors can choose from. The fast-track option is an accelerated application for a yet-to-be-determined “prioritized examination” fee. The goal is to handle these applications in under a year. The middle track is similar in time and price to the current review process. And the third, slower track is for when time is not a major concern to the inventor. (American Innovators for Patent Reform was represented at a public hearing at the USPTO this past July regarding the Three-Track Program. AIPR generally promotes the Three-Tracks proposal. A video of the AIPR presentation is available at www.aminn.org.)
9. Conduct a thorough search of prior art before changing your application status from provisional to nonprovisional. Armed with a strong knowledge of prior art, inventors can specifically and methodically distinguish their inventions from others. And if you don’t do a good search, it may lead to unnecessary office actions, which can delay the patent. Many patent agents/attorneys will do this search, but only if you tell them to.
Bear in mind that it is possible a prior art search may show you are not, in fact, the first to come up with your invention. So if you or your patent agent/attorney discovers prior art dated more than a year before the date of your application, it will prevent your patent from being issued. You will then either have to abandon the application, or you and your patent practitioner will need to reconstruct your patent’s claims around the prior art.
10. File a “Make Special” Request for expedited patent examination, a request that applies to a limited number of applicants. The USPTO lets inventors apply for accelerated examination if a product using the patented invention is ready to be manufactured or the patent is being infringed. It also applies to patents for inventions that have applications in environmental quality, energy, recombinant DNA, superconductivity materials, HIV/AIDS and cancer, anti-terrorism, or biotechnology. Inventors can also apply for “Make Special” examinations based on their health or age. There are also a few other conditions that need to be met.