Innovation and Traditional Patent Process
When you develop an innovation, its potential patentability is typically unknown, thus making it difficult to determine whether it is worth the significant expense involved if you seek patent protection for the innovation. Traditionally, if you decided to seek patent protection, you would file a non-provisional (utility) patent application in the United States Patent and Trademark Office ("USPTO"), and then wait a year or more for the examiner assigned to the application to issue a first office action providing a first official assessment of the patentability.
While you could also file a Patent Cooperation Treaty ("PCT") application within a year of the filing of the original non-provisional application, it might still take several months to receive search results from the search and examination authority (e.g., the European Patent Office ("EPO")) designated in the PCT application. Therefore, using traditional approaches could result in a considerable amount of waiting around and expenditure of significant costs just to see if your invention or innovation has any patentable merit.
Accelerated Patent Procedures
The USPTO has long offered accelerated examination procedures, but many of these may be less effective than desired and/or may incur considerable costs. For several years, a "Petition to Make Special" could be submitted in order to accelerate examination of your patent application. Grant of such a petition typically requires special circumstances, such as showing that you are of an advanced age, or that your invention will materially improve environmental quality or counter- terrorism, or your payment of a relatively hefty fee.
While a Petition to Make Special can expedite examination and allowance, sometimes it fails to deliver the promised benefit. For example, submitting the petition could simply lead to moving your application from the bottom of one stack to the bottom of another stack that is not all that much shorter. Accordingly, the USPTO developed additional expedited examination procedures, such as Track One Prioritized Examination, which provides for final disposition within 12 months, but includes limitations on the number of claims that may be examined and carries a relatively high filing fee.
These procedures can be very valuable if your company is an emerging one that is seeking to quickly establish the value of its innovations, but they may be less than desirable if your company is a resource-constrained startup or other smaller organization. Your emerging company may rather need to reserve its resources for things like salaries, hardware, and marketing than for seemingly more speculative investments in patent protection. In addition, pursuit of some ideas may end up wasting significant resources when they encounter resistance at the USPTO or other patent offices. While you might want to thoroughly search the prior art before embarking on the pursuit of a patent application, your emerging company may not have the time, money, and personnel needed to perform exhaustive searches and evaluate the results of such searches to avoid ill-advised filings.
The Patent Prosecution Highway
A relatively new procedure for accelerating prosecution is the Patent Prosecution Highway ("PPH"), which might be viewed as applying the concept of the "global supply chain" to patent procurement. Generally speaking, the PPH is a set of bilateral and multilateral agreements among various national patent offices that allow for accelerating examination in a given patent office by relying on results already obtained in another patent office. The USPTO, for example, participates in several PPH arrangements, including the Global PPH and IP5 PPH pilot programs. These arrangements enable a United States applicant to use the results of patent prosecution in another country, such as Australia, Canada, or Israel, to accelerate the prosecution of the United States patent application. United States applicants can typically obtain reciprocal benefits in these other countries.
At this point, you may be asking yourself "how could filing two patent applications help me find out if my invention is worthwhile more quickly and/or at a lower cost?" This subtraction by addition can be achieved because some national patent offices are less backlogged with applications than other jurisdictions (e.g., the USPTO and EPO) and/or may offer quicker and more cost effective examination and acceleration options. You can take advantage of such options to obtain an expedited determination of potential patentability at a lower cost. When used in conjunction with the PPH, these procedures may also streamline procurement of patents in multiple jurisdictions.
By way of example, one of the USPTO's PPH counterparts is the United Kingdom Intellectual Property Office ("UKIPO"), which currently offers relatively low filing costs and streamlined accelerated search and examination procedures. No translation is required, of course, and the filing fees for a non-provisional application in the UKIPO are currently less than $500 and the UKIPO currently does not assess a surcharge for accelerated prosecution.
Although accelerated prosecution requires a justification, such as showing of applicability to what the UKIPO refers to as the "Green Channel" (i.e., inventions that have environmental benefits) or a showing of a need to determine patentability to justify an investment decision, these requirements can often be satisfied with thoughtful advocacy.
The resulting process can be quite fast. By using the UKIPO Combined Search and Examination procedure with a request for accelerated examination, for example, you may receive a first combined search and examination report in a matter of weeks. While the UKIPO procedure can be attractive, it is likely that additional alternatives will emerge as patent law harmonization proceeds and PPH-like agreements proliferate.
How the Patent Prosecution Highway Might Help You
How might your company, as a small, resource-constrained start-up, take advantage of such a global supply chain strategy? One approach might be to first file a United States provisional application, which enables you to establish a United States filing date for a relatively low filing fee. Shortly thereafter (i.e., after obtaining a U.S. foreign filing license from the USPTO, which may be required before a foreign filing), you could file an application in the UKIPO claiming priority to the United States provisional application, with a request for accelerated search and examination.
Assuming the UKIPO stays true to form, the UKIPO search and examination may enable you to gain a better idea of the potential patentability of your invention relatively quickly before the go/no-go decision as to whether to pursue a regular United States non-provisional application and/or international protection via the PCT upon the one-year anniversary of the provisional filing. All of this can be achieved at what currently is a modest cost.
If you are so lucky as to obtain a UK patent before United States prosecution commences (or early in the United States prosecution), the results of the UKIPO prosecution can be used as a ground for a Petition to Make Special under the PPH in the USPTO, thus potentially accelerating prosecution and issue in the USPTO.
Using the UKIPO or other foreign patent offices in such a manner may not be appropriate for all applications. For example, the UKIPO may not be a good idea for certain types of subject matter, such as information technology or finance, where the UKIPO may apply stricter standards than, say, the EPO. That said, global examination options may be very important considerations when you implement a patent strategy.
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This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.