U.S. patent rights to an invention can only be enforced after
the patent issues. However, due to a backlog in the U.S.
Patent and Trademark Office's (USPTO) of approximately 700,000
patent applications, the average length of time before a patent
application is even examined is over two years. In some areas
of technology, the wait can be significantly longer. This
prolonged examination of a patent application may be
disadvantageous to an applicant for a number of reasons. For
example, this may delay one's ability to enforce his or her
rights to the invention, allowing infringing competitors to unduly
gain market share. A postponement may also make it more
difficult to raise capital or to license the patent rights.
Fortunately, there are procedures that may be used to expedite
examination of patent applications.
Prior to August 25, 2006, there was a long list of potential
factors that could be used to support a "petition to make
special" for expedited examination. Except for the
factors of an applicant's age (over 65) or health, accelerated
examinations have been replaced with the Accelerated Examination
(AE) program. Under the AE program, a petition to make
special can be filed for any application, but further requirements
must also be met. The AE program requires that the applicant
must conduct a pre-examination search. Applicant must also
include an identification of all the limitations in the claims that
are disclosed by the references, specify where each limitation is
disclosed in each reference, and provide a detailed explanation as
to how each of the claims in the patent application is patentable
over the references found in the search. Although there are
additional requirements under the AE program, these requirements
alone add significant cost and can also result in a weaker patent
due to estoppel resulting from the statements made to distinguish
the claims over the references found in the search. This can
result in a narrow, literal scope of protection due to the
explanations given by the applicant of claim terms, without
allowing claim terms to cover a range of equivalents under the
doctrine of equivalents.
Fortunately, the USPTO more recently introduced another approach to
obtain expedited prosecution for inventions related to "green
technologies" which does not require a search, claim analysis,
or patentability arguments as with the AE requirements. In
addition, the Project Exchange program permits an application filed
before October 1, 2009 to be accelerated, without the AE
requirements if another co-owned application filed before October
1, 2009 is expressly abandoned in exchange.
Another recent option without AE requirements is the Patent
Prosecution Highway (PPH) pilot program. Accelerated
examination under the PPH is available for applicants who are
pursuing patents in more than one country. Under the PPH
program, applicants can take advantage of favorable findings by the
first patent office in which the application is filed to expedite
patent examination in another patent office. The PPH program
currently exists between the USPTO and Australia, Austria, Canada,
Denmark, the European Patent Office, Finland, Germany, Hungary,
Japan, Korea, Mexico, Russia, Spain, Singapore and the United
Kingdom. A U.S. patent application may be eligible to enter
the PPH program if patentable claims are found in the first country
where the original patent application was filed. However, the
PPH program cannot be based on a favorable report on patentability
issued in a PCT application.
A U.S. national phase application receives expedited examination if
the claims were found to be patentable during the international
phase based on a search by the U.S. searching authority.
However, if the search was conducted by a foreign searching
authority, expedited examination is not automatically available.
The PCT-PPH program, still a trial program, now permits a favorable
report on patentability issued in a PCT application to be used to
expedite examination, even if the international searching authority
was the Japanese, European or Korean patent office. While the
favorable report is not given full faith and credit, to date,
patent applications in the USPTO's PCT-PPH program have
been allowed at the rate of 98 percent, more than double
the overall USPTO allowance rate of 46 percent. Additionally,
PCT-PPH applications have a shorter examination process, with an
average of 1.17 Office Actions issued by the USPTO before disposal
for PCT-PPH applications, significantly less than the overall
average of 2.42 actions before disposal.
To be eligible for the PCT-PPH program, substantive examination
must not have begun in the U.S. patent application and all claims
must have the same, similar, or narrower scope as the claims found
patentable in the PCT application. While a request to enter
the PCT-PPH program requires no governmental fees, a verified
English translation of all claims determined to be patentable must
be provided to the USPTO along with a chart indicating how claims
in the U.S. application sufficiently correspond to the patentable
claims in the corresponding PCT application. An Information
Disclosure Statement (IDS) that includes all documents cited in the
PCT office is also required.
While the PCT-PPH program has many benefits, PCT-PPH applications
are subject to the restriction that further claim limitations can
not be added during prosecution unless the limitations were already
present in at least one of the claims when the PCT-PPH request was
granted. In the unlikely event that all claims in a PCT-PPH
application are found to be unpatentable and limitations not
previously examined must be introduced into the claims, a
continuation application must be filed to introduce the new claim
limitations.
There are now several options available to expedite the prosecution
of a U.S. patent application. Due to the simplicity and the
benefits of the PCT-PPH program, this option should not be
overlooked for U.S. national phase applications when considering
patent prosecution options.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.