This section addresses issues and questions that I commonly encounter as I represent inventors and guide them through the patent prosecution process. Patent prosecution refers to the process of shepherding a patent application through the USPTO’s process from the time the patent application is filed to its maturation. Understanding these, sometimes counterintuitive, steps will enable inventors to utilize them for their own benefit. My goal is both to explain the rules and procedures of the patent prosecution process and, more importantly, to help inventors understand how to take advantage of the rules and procedures for their own benefit.
How long will it take to get a patent? Is there any way to speed up the process?
Normal wait time: One to three years or longer
It normally takes one to three years, or longer, for a filed, nonprovisional patent application to be examined.51 However, the process can be expedited so that substantive examination of the patent application occurs within six months. Generally, I do not recommend expedited examination without good business or personal reason because the initial Office Action will be rendered earlier and applicants will incur substantial patent prosecution costs (i.e., the examination costs) earlier in the patent process. Delaying attorney fees may be beneficial for a startup, solo inventor, or investor as this allows them to test marketing first before spending more on legal fees, and requesting expedited examination is therefore not recommended.
Some clients do not need the issued patent during the early stages of their business launches and do not request expedited examination. Some entrepreneurs have existing business relationships, distribution channels, and/or customers so a patent is not essential to the success of their product. In these cases, clients would rather wait for the USPTO to render the initial Office Action since the issued patent is a small part of their long-range business plans. By contrast, other clients may seek a patent earlier to attract investors and licensees. The issuance of the patent could significantly enhance the attractiveness of the invention to investors and also to potential licensees. These clients may choose to expedite examination and incur the expenses sooner rather than later to secure the patent.52
Usually the USPTO examines patent applications in the order in which they are received. By applying for expedited examination, an application can be examined before those that were submitted prior to it. Two common procedures for requesting expedited examination are “prioritized examination” (i.e., “Track One”) and a petition “to make special based on age.” There are other forms of expedited examination, but these are not available or beneficial to most applicants.
Speeding up the process: Prioritized examination, or, Track One request
The Track One request was borne out of inventors’ frustrations regarding the monetary and business costs associated with delayed examination, which in some cases prevented inventors from exploiting their inventions immediately. The Track One request enables an applicant to pay for the advantage of expedited examination of his or her patent application if they believe that delayed prosecution really does cost them money. Prioritized examination costs about one to four thousand dollars for the governmental fees alone and depends on the size (i.e., micro-entity small entity, or large entity) of the business or entity (i.e., Applicant).53 The Track One request must be filed at the time of filing the nonprovisional patent application. When a patent application is filed with a prioritized examination request, the USPTO typically renders an initial Office Action in less than six months, as opposed to the usual fourteen months.
Speeding up the process: Petition to make special based on age
A petition to “make special based on age” is free but at least one of the inventors must be sixty-five years of age or older. The petition is a single page form that can be filled out after the nonprovisional patent application has been filed and any time before the USTPO issues the first Office Action. If a petition to make special based on age is granted, the first substantive Office Action may be rendered in as early as six months. However, it has been my experience that these types of requests are not closely tracked by the USPTO, and thus patent counsel should follow up with the USPTO to make sure that the petition has been calendared on the examiner’s docket.54
51. As previously mentioned, provisional applications are never examined. For more on the difference between provisional and nonprovisional applications, see Chapter 9
52. See Chapter 7, step #3 for more information about filing for expedited examination
53. The fee varies and depends on the entity size of the entity (i.e., patent applicant). A large entity will pay the standard rate, a small entity (~500 employees) about fifty percent of the standard rate, and a micro entity about twenty-five percent of the standard rate. Appendix E explains the differences between large, small, and micro entities and shows government filing fees for those entities
54. In my experience, patents with petition to “make special based on age” often fall through the cracks This is because, unlike for Track One requests, the USTPO does not have a tickle report (i.e., a reminder) that tells the supervisory patent examiner to place a patent application with a granted petition to make special on docket.