Expediting Your Patent Application: Let us Count (or Define) the Ways

05/22/2014

If you like having options in obtaining patent rights faster, the U.S. Patent and Trademark Office (PTO) has been eager to please in the last decade. Expediting a patent application can be highly desirable since the average pendency from filing to issuance is about three years on average, and can be even longer in certain technology areas or if an appeal to the Patent Trial & Appeal Board is required. The PTO’s latest choice, the “Patent Glossary,” permits an applicant to define their way to an expedited examination. Specifically, a limited subset of software and business method type applications classified in four specific technology centers (2100, 2400, 2600, and 3600) may be expedited if they include a glossary section and heading at the beginning of the detailed description section. The definitions in part have to “assist in clarifying the claimed invention and creating a clear application file wrapper record.” This program begins June 2 and is scheduled to sunset by December 2, 2014.

Not all strategic filing options are created equal, however, and the Patent Glossary is no different in having a few wrinkles. Chief among these is that only 200 applications will be accepted before the program terminates, and success in qualifying will only expedite the application to the first Office Action. The defined terms must establish “limits for a term by presenting a positive statement of what the term means,” cannot be disavowed elsewhere in the application, and cannot be open-ended or define a term by what it does not mean. Thus, another risk is defining terms too narrowly (or too broadly), or not defining enough terms to actually qualify for the Patent Glossary expedited program, and then being stuck with the defined terms without the expedited benefits. The PTO could also misclassify an application outside one of the technology centers, eliminating the chance that an application will qualify for the Patent Glossary program. Given all the PTO options, let’s briefly explore other existing choices.

The most popular expediting tactic, at least for many practitioners since the America Invents Act (AIA) took effect, has been a request for prioritized examination under the so-called “Track I” program. While there are steep PTO fees to participate that cost more than double the typical patent application filing costs, little finesse is required in drafting the request and thus no significant litigation risk is created by participation in the Track I program. On the upside, Track I patent applicants will receive at least two substantive Office Actions within one year of filing if certain requirements are met.

Expediting Patents Table

As can be seen above, various PTO expediting programs have come, and, in some cases, have already gone. But two important programs noted above are still available despite not being regularly discussed: Age or Health of Applicant and the Patent Prosecution Highway. These expediting tactics may be overlooked by some because they require very particular circumstances to be met, but once met they are highly desirable expediting options. Requirements for other programs are easier to meet, such as for the AESD or the Patent Glossary, but are associated with disadvantages in the form of PTO costs, legal fees, interpretational limitations, or a combination thereof.

From a practical (and simplified) perspective, the new Patent Glossary program seems likely to find heavier use among small software companies, and possibly among software companies with many cases having similar subject matter and a similar glossary, all of whom want rapid examination without significant fees and do not mind the other limitations of the program. However, this program will exist only for the first 200 applicants. Thus, that option may vanish on day one—or may linger for years due to hesitancy to participate in the program because of its limitations. The PPH, however, is still an excellent option for applicants with a non-U.S. priority patent who want to quickly pursue the same claims with the PTO, or for U.S. applicants who have their U.S. priority patent and wish to do the same outside the U.S. For small entity applicants (who save 50 percent on the PTO costs) and applicants with deeper pockets, all of whom have a set of higher priority applications, the Track I procedure has seen significant use with stellar success. And for those wizened inventors who have the age or poor health to qualify, nothing beats a fee-free Petition to Make Special to expedite an application without significant legal fees.

Just as a trip down a supermarket aisle or to your favorite chain coffee shop can provide a bewildering array of choices, so too does the PTO provide numerous options with hidden costs and benefits that require careful consideration. Ultimately, though, having multiple options to expedite an application is extremely useful if you understand the risks and benefits, and the PTO should be applauded for its creativity in working with applicants to increase optionality and concurrently reduce the patent application backlog in recent years.

If you have any questions regarding these matters, please contact us.

California
Tom Chen
949.202.3030
tom.chen@haynesboone.com

Texas
Randall C. Brown
214.651.5242
randall.brown@haynesboone.com

Washington, D.C.
Jeffrey Wolfson
202.654.4565
jeff.wolfson@haynesboone.com

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