When people decide to pursue a patent, they often don’t understand the time frames that are involved. In other words, the initial enthusiasm for pursuing your dream can wane when you realize that getting a patent approved by the U.S. Patent and Trademark Office (USPTO) can take several years. There are a few ways to speed up the process, and for the right inventor, requesting prioritized examination can be a worthwhile step. How long will it take to get your patent approved, and is it worthwhile to expedite the process? Here's a brief look at the length of a patent application, and when it's wise to speed it up.
Understanding the Patent Application Process
Patent practitioners think of the patent process in terms of “prep & pros”. Prep, or preparation, includes all activities that occur before filing a patent application. This includes all information gathering, research, and writing of the actual patent application. Depending on your invention, the average time frame for preparing the patent application is usually a matter of weeks or a few months.
“Pros”, or prosecution, includes everything that occurs by the national patent office. At the USPTO, prosecution commences with the filing of a patent application; there are many formalities to resolve during prosecution, but every inventor dreads the substantive rejections that US patent examiners issue as Office Actions. After filing, the average wait to the first Office Action is 21 months. The average time to issue a patent is 32 months from filing the application.
The Importance of Patentability Search
Take note of one nuance. By filing a patent application and initiating the prosecution phase, you are locked in. You can’t add new matter to the patent application; you also can’t remove information, even if you decide it would be better to keep it secret. Whatever was filed as a patent application will be published. As you can imagine, this nuance incentivizes thorough and comprehensive preparation, including getting a patentability search. Hiring a professional patent research company like Global Patent Solutions only adds less than two weeks (and remember that you are gearing up for nearly 3 years of patent prosecution). The patentability search will discover prior art that is relevant to your invention, similar to what the US patent examiner will find during prosecution. How does this help you?
For starters, a patentability search helps you assess whether it's worthwhile to move forward. If the closest prior is too close, you might decide to keep working on and improving your invention rather than filing right now. In any case, the patentability search helps you to frame your application for approval; patent practitioners refer to this as “drafting around” the prior art. This may even influence your decision to file a utility patent application (for a new method or machine) or a design patent application (for the ornamental design of a utilitarian device).
The process of obtaining a patent is long and can be expensive. Working with experienced patent practitioners is crucial for making the process flow smoothly. Those practitioners understand that an ounce of prevention is better than a pound of cure.
You can speed up the patent process by visiting USPTO's Patent Application Initiatives Timeline, which features different programs that advance the patent application process. Whether you choose to expedite your application or wait it out for regular examination, it's important to know that you do not need to wait for the USPTO to approve your patent to begin using it for business purposes.
Track One is the name of USPTO's limited prioritized examination for utility and plant patent applications. In order to qualify for the prioritized examination, the applicant must pay significant fees. USPTO assigns a priority status to the applicant then seeks to review the patent application within 12 months.
Accelerated Examination at the USPTO is available for a nominal fee which can be waived for inventors over 65 and suffering from advanced illness. However, the request for accelerated examination must also include an examination support document that is based upon a patent search. Purchasing a patent search from a commercial third party like GPS typically adds a few hundred dollars and a few weeks. Additionally, your patent attorney will need to review the patent search and prepare his analysis of the art that was found.
The Full First Action Interview Pilot Program has no fee, but participation in the program requires special intervention from your patent attorney. Rather than a first office action, the examiner will provide a summary of relevant prior art and proposed rejections; the inventor and attorney must schedule an interview to discuss the application in light of the prior art. This intervention leads to speedy resolution, but it requires a significant amount of your attorney’s time.
Although we aren’t discussing them here, other programs are available for copending patent applications, where a related foreign patent has issued already.
When Expediting Is Worthwhile
Expediting your patent application typically creates additional costs, such as USPTO fees or your attorney’s fees. Although the cost can be substantial, it can at times be a relatively easy business decision. If waiting several years will cost you more than the expedited fees, the decision to expedite is easy. Here is a sampling of scenarios when it may be advantageous to expedite the patent process.
- You want to get the product on the market quicker than originally anticipated.
- Information about your invention was leaked out and you want to ensure credit as the innovator.
- You need to meet a rising demand before a competitor does.
There are many situations where there is no tangible benefit to expedite the patent application. The largest corporations may adopt this strategy because they already control a particular technology; solo inventors may adopt a similar approach to see if the technology takes off in the intervening years. In fact, many solo inventors and start-ups prefer the long wait to secure funding for their invention.
Whatever your situation, obtaining a professional patent search is a first step on the journey. Contact us at Global Patent Solutions at 877.274.2011 to learn more about the patent process. We want to help you have a clear understanding of this complex process, so that you can better plan to reach your goals.