The Intellectual Property Strategist ® Volume 17, Number 4 • January 2011 Fast or Slow? Strategies to Speed Up the Process Among Worldwide Patent Offices

By Louis D. Lieto uspto.gov/dashboards/patents/main. The Revised Accelerated Examination and Vern Norviel dashxml. Currently, the overall allowance Program: This program is generally avail- rate for the USPTO is about 46% and the able for any application but requires that A threshold question for each patent rate without Requests for Continued Ex- the applicant conduct a pre-examination filing is the speed at which a patent is amination, which are counted as aban- search and provide the USPTO a pre-ex- desired. donments, is 60%. amination support document. See MPEP In many cases, applicants want to ob- USPTO: Pa t h w a y s to § 708.02(a). These requirements are gen- tain patent protection as rapidly as pos- App l i c a t i o n Ad v a n c e m e n t erally viewed as being quite burdensome sible in order to guard against infringers There are presently several routes avail- and of uncertain impact on prosecution of or as a show of success to potential inves- able in the United States to fast track an future applications or potential litigation. tors. In these situations, there are a variety application. These include petitions: based The Project Exchange Program: This of mechanisms available including: peti- on age/health of an inventor; under the temporary program allows an applicant tions to advance examination in the Unit- Green Technology Pilot Program; to make with more than one application to expe- ed States (e.g., a petition to make special); special under the revised accelerated ex- dite review of one application by with- and accelerated requests for search and amination Program; or under the Patent drawing another unexamined application. examination in foreign jurisdictions such Prosecution Highway (“PPH”). Also, the See www.uspto.gov/patents/init_events/ as Europe or the United Kingdom. USPTO Project Exchange program, which PatentStimulusPlan.jsp. In October 2010, In other situations, a client may desire is designed to help reduce the application it was expanded to include both large and to obtain a patent at the normal pace of backlog at the USPTO, is available until small entity applicants. However, it is lim- the various patent offices. For example, the end of 2011. ited to 15 applications per entity and cur- proceeding to issuance at a slower pace Age/Health of an Inventor: An applica- rently expires on Dec. 31, 2011. can allow applicants time to develop and tion is eligible for this program if an in- Of course, in any case, prosecution can plan the commercialization and marketing ventor is age 65 or older or in poor health. be advanced significantly by filing a U.S. of their invention. In this situation, a client A statement is required attesting to the age Utility application in the first instance, can choose to file a U.S. provisional ap- or health of the inventor eligible for this skipping the process of filing a provision- plication, followed by a Patent Coopera- process. See U.S. Pat. & Trademark Office, al . tion Treaty (“PCT”) application and then U.S. Dep’t of Commerce, Manual of Patent Th e Pa t e n t Pr os e c ut i o n Hi g h w a y various nationalization stage applications. Examining Procedure § 708.02 (IV) (8th An increasingly attractive option for ap- This strategy can extend the time to issu- ed., 8th rev. 2010) [hereinafter MPEP]. plicants is to make use of the PPH. The ance significantly in comparison with the The Green Technology Pilot Program: PPH is a series of bilateral agreements available acceleration strategies. This program was first announced by the that enable an applicant who received no- On average, a patent filing in the U.S. USPTO in 2009 and is scheduled to run tice of at least one allowable claim from a Patent and Trademark Office (“USPTO”) until Dec. 31, 2011. Recently, the USPTO patent office of first filing (“OFF”) to ex- takes just over two years for a first office broadened the pilot program to provide pedite examination in an office of second action to be generated and about three faster examination of certain “green tech- filing (“OSF”). This can lead to cheaper years until a final disposition is made (e.g., nology” patent applications regardless of and faster global patent coverage. In ad- allowance or abandonment). See www. filing date. However, only the first 3,000 dition to the original PPH, there is also petitions that meet the requirements to the PCT-PPH, which allows one to lever- participate in the green technology pilot age a “clean” Search Report from a PCT Louis D. Lieto is an associate in the Wash- program will be accepted. See www.usp- (performed by a participating jurisdic- ington, DC office of Wilson Sonsini Goo- to.gov/patents/init_events/green_tech.jsp. tion, such as the drich & Rosati, specializing in intellectual According to recent USPTO sources, 1,595 (“EPO”), Japan, Korea or the USPTO) to property. Vern Norviel is a partner in the requests have been filed by applicants expedite an application through the PPH. Palo Alto office of the firm, specializing in for the program, and 790 of those have The USPTO has agreements with several intellectual property. been granted. patent offices for the PPH, including the LJN’s The Intellectual Property Strategist January 2011

EPO, Germany, Spain, Korea, the UK and It is generally advisable to file a PACE the UK in less than a year. The UK-IPO others for the PCT-PPH. See www.uspto. request along with an EP application, as it requires applicants to provide reasons gov/patents/init_events/pph/index.jsp. is not uncommon for the normal examina- why the request to accelerate should be In the USPTO, a request to participate tion process to last five to seven years be- accepted. Similar to the USPTO, the UK- in the PPH program must be filed with fore an application is granted by the EPO. IPO will typically grant such a request for a petition to make special; however, no While it is possible to use the EPO as an “Green Technology” applications without fee is required. Under the PPH process, OFF under the PPH of PCT-PPH, there are additional justification. Other acceptable there are numerous ways to enter into the some drawbacks to this approach. Even reasons include that applicant is aware program. In order to receive expedited ex- under the PACE process, examination in of a potential infringer or a more rapid amination in the United States as the OSF, Europe can be lengthy and more formal search, examination, or issuance is need- one must have allowed claims from an than in the United States and other coun- ed in order to gain an investor. For early OFF or a clean Search Report in a PCT. See tries. For example, unlike in the United stage companies, acquiring investment is www.uspto.gov/patents/init_events/pph/ States and the UK, a meeting between frequently vital and can provide grounds pph_faqs.pdf. the applicant and the Examiner is much for making a request for acceleration. According to recent USPTO sources, just more formal and of greater binding con- Given the rapid pace of examination over 4,100 requests had been filed under sequence. Also, the EPO has a formal op- under the accelerated examination proce- the PPH. A first for an appli- position procedure in place, which allows dure, one can potentially use the UK-IPO cation filed under the PPH was received a third party to tie up a patent in proceed- as an OFF, receive a notice of allowable between two to three months after the ings for years after it is granted. claims in less than a year, file subsequent PPH request was granted and more than Di r e c t Eu r op e a n Fi l i n g s applications via the Paris Convention or 90% of the applications filed under the Alternatively, an applicant can directly the PCT and utilize the PPH process to PPH were allowed. file an application in one or more Europe- expedite in other countries (e.g., the Unit- The PPH process can be fairly complex an countries before, in conjunction with, ed States). The UK application can be a and when the USPTO is used as the OSF or instead of filing an application with the first filing or the national stage of a PCT most paths prevent an applicant from fil- EPO. For this strategy, it is wise to file in that has no priority claim. Using these ap- ing a U.S. provisional application, with the countries of economic importance to the proaches it is possible to rapidly obtain PCT-PPH being the exception. However, applicant’s underlying business. In Eu- allowable claims in the UK, which can be with careful execution it can dramatically rope, countries with important markets used to demonstrate to potential investors reduce the time and cost to obtaining a and a PPH agreement with the USPTO the kinds of claims that will likely be ob- U.S. patent. include the UK, Germany and Spain. U.S. tained in other jurisdictions, such as the Pr o g r a m f o r Ac c e l e r a t e d applicants should be aware that for non- United States. Pr os e c ut i o n o f Eu r op e a n English speaking countries, translation Unlike the EPO, the UK-IPO does not Pa t e n t App l i c a t i o n s costs can significantly increase the cost have an opposition procedure, which pro- Under the Program for Accelerated of prosecution. Also, the United States re- vides a greater degree of certainty to an Prosecution of European Patent Applica- quires that an applicant obtain a foreign applicant that any issued patent will re- tions (“PACE”), an applicant can acceler- filing license if the invention was made in main in the form granted. By securing a ate the search procedure, examination the United States before first filing abroad. UK patent, an applicant can protect its in- procedure or both for a European (“EP”) This license can generally be obtained vention in a significant European market, application filed in the European Patent within two or three days after a request free from the worry of opposition and in Office. See http://archive.epo.org/epo/ is made. For many U.S. applicants, the UK a faster manner than by filing an EP ap- pubs/oj010/06_10/06_3520.pdf. There is one of the more important markets in plication alone. are no special requirements to qualify for Europe and has the added advantage that Co n c l us i o n PACE, the request can be filed at any time no translations are required. There are several avenues open to ap- and no official fee is required. However, a Ac c e l e r a t e d Se a r c h a n d plicants who want to speed up the time request under PACE is subject to the work- Ex a m i n a t i o n a t t h e UK-IPO to allowance in the United States and load of the relevant search and examining In the UK, an application can be filed abroad. However, many are procedurally division, which for some technologies can together with a request for a combined complex and require advance thought on lead to constraints in how timely an appli- and accelerated search and examination. how to execute in view of larger business cation is examined. In practice, a modest See www.ipo.gov.uk/p-fastgrantguide.pdf. objectives. decrease in time to first examination has When an accelerated prosecution request been observed in complex technologies, is granted, the United Kingdom Intellec- such as the life sciences. In some technol- tual Property Office (“UK-IPO”) typically ogies, it has been observed that applica- issues a first examination report within tions filed under PACE are searched within two months and will continue to do so if Reprinted with permission from the January 2011 edition of the six months from filing of a request and an the applicant responds in a timely manner. Law Journal Newsletters. © 2011 ALM Media Proper- examination report can be received within When early publication is also requested, ties, LLC. All rights reserved. Further duplication without per- mission is prohibited. For information, contact 877.257.3382 or three months. it is possible to get a patent issued in [email protected]. #055081-01-11-06