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How Long Will it Take Me to Get a Patent?

How Long Will it Take Me to Get a Patent?

Clients often want to know how long it will take them to get a patent.  Of course, whether they get one at all will depend on whether their invention is novel and non-obvious as well as how broadly their claims are drafted.  However, those questions aside, there is also the issue of how quickly the U.S. Patent & Trademark Office (PTO) can process their application.

Last month, the PTO issued its 2012 Annual Report, which is full of interesting data.  For 2012, the average pendency of an application prior to issuance as a patent (or abandonment) was just shy of three years, 32.4 months.  The average pendency of an application before it received a first office action was just shy of two years, 21.9 months.  Clients may be surprised to hear that this is an improvement over years past, but it is.  Consider that in 2012, there were 565,566 patent applications filed.

Of course, clients are also surprised to hear that they have no enforceable rights while they are merely in “patent pending” status.  So, what can you do to expedite the processing of your applications?

The PTO has a program called “Track One” that will allow you to get a final disposition of your application in 12 months if you request it at the time the application is filed.  The program applies to non-provisional utility applications, not design applications.  In order to use this process, you will have to pay a fee of $4,800 (large entity) or $2,400 (small entity) in addition to the regular filing, search, and examination fees.  You will also have to pay a $300 publication fee at the time of filing (this is normally deferred until you pay the issue fee) and a $130 processing fee.  However, there is no requirement that you perform a prior art search or make any statements at the time of filing as to how the invention distinguishes the prior art.  The PTO will only accept 10,000 Track One applications in a fiscal year.  After that number is reached, the process is not available.  According to the PTO’s 2012 Annual Report, it issued 606 patents through Track One in Fiscal 2012, and it did so in an average of less than six months.

In order to qualify for Track One processing, the application cannot include more than four independent claims, thirty total claims, or any multiple dependent claims.  Track One cannot be used for PCT applications entering the national phase in the U.S., but it can be used for U.S. non-provisional applications that claim the benefit of an earlier filed PCT application under 35 U.S.C. § 120.  The PTO has an excellent list of answers to frequently asked questions at

http://www.uspto.gov/patents/init_events/track1_FAQS.jsp.

The PTO also has an Accelerated Examination Program which seeks to complete examination within 12 months of filing an application.  However, this program requires the applicant to conduct a pre-examination search and to submit an “examination support document” in which the applicant identifies where the prior art discloses the various claim limitations.  The applicant must also provide a detailed explanation of how the claims are patentable over the references and correlate the applicant’s claims to the supporting disclosure in the application.  Thus, the Accelerated Examination Program forces the applicant to make many admissions that could be problematic during future litigation.  However, the only fee for requesting Accelerated Examination is the petition fee (currently $130), so it is far cheaper than Track One.  Unlike Track One, the Accelerated Examination Program may be used for utility and design applications.

A special expedited examination procedure exists for design patents.  The applicant must conduct a pre-examination search and certify that was conducted.  However, there are no required admissions regarding the disclosures of the prior art or their relationship to the claimed design as in the case of the Accelerated Examination Program.  The current fee for requesting expedited examination of a design application is $900.

Thus, while applications can typically take on the order of two years to be examined and three years to reach final disposition, the PTO has several procedures for expediting examination.  Selecting the right procedure involves considering the type of application(utility or design), the price, and your sensitivity to making admissions regarding the prior art that could be used against you in the future.

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