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Recent changes at United States Patent and Trademark Office (USPTO) are reshaping the dynamics of patent prosecution, creating both opportunities and challenges for patent Applicants. The USPTO has recently implemented the Streamlined Claim Set Pilot Program and discontinued the Accelerated Examination program, leaving Track One and the Patent Prosecution Highway (PPH) as the remaining primary options in the US for expedited examination. The USPTO has also restructured examiners' working conditions, revised or eliminated review procedures, revamped how backlog applications are handled, and introduced a second tier patent examiner position for AI development in an effort to reduce patent pendency.
These shifts, like any, involve trade-offs. Some applicants may welcome deferred examination, which postpones examination costs and can better align time to allowance with time to market. Others my conclude that reduced examination consistency and predictability will place a greater responsibility on Applicants to ensure validity and enforceability. This shift is likely to place a greater emphasis on "self-policing" of applications, e.g., careful claim drafting, strategic management of disclosures, and proactive filing strategies.
Applicants often seek the relative certainty and enforceability provided by an issued patent. However, in particular with technologies where the time-to-market is short relative to U.S. patent prosecution timing, US applicants may find that use of options outside the US that provide pendency better aligned with their needs while providing greater examination consistency.
Applicants can expedite patent examination and provide greater certainty by leveraging foreign patent offices known for relatively short pendency and high-quality search and examination. For example, with accelerated examination, the time to a first office action in Japan or Korea is about two months, and less than about six months in the United Kingdom (UK). If a Patent Cooperation Treaty (PCT) application is pending, Applicants can request expedited US examination of any claims found allowable in the participating patent office using the PPH.
Alternatively, where a robust search is desired in a technology area in which the European Patent Office (EPO) has recognized expertise, applicants may first file at the EPO and then request accelerated examination through a PACE request. If any claims receive a favorable assessment, Applicants can then proceed via the PPH. As such, the PPH provides a cost-effective mechanism for leveraging expedited examination procedures across participating offices, enabling Applicants to obtain patent allowance more quickly and efficiently.
Another route to facilitate patenting is to prosecute in the PCT phase. Prosecuting in the PCT phase, and then proceeding to national stage entry with allowable claims, can provide significant time savings and increased certainty. In the PCT phase, the International Preliminary Examining Authority (IPEA) will issue an International Search Report and Written Opinion (ISR/WO) within about 16 months from the priority date. After receiving the ISR/WO, amendments can be filed under Article 19 or Article 34 to place the claims in condition for allowance prior to entering the national phase.
Further still, some foreign patent offices offer substantial cost advantages relative to the USPTO. For instance, the Korean Intellectual Property Office (KIPO) can serve as the International Searching Authority (ISA) for a PCT application filed in English and has a search fee that is approximately one-third of the USPTO's standard search fee. Similarly, the fee for a UK application with a search request is approximately one-third of that at the USPTO. Accordingly, selecting a patent office that combines cost efficiency with a reputation for rigorous examination can yield meaningful cost savings for cost-conscious Applicants.
In conclusion, as U.S. patent pendency increases and changes at the USPTO introduce greater uncertainty, leveraging foreign patent offices can offer strategic advantages by better aligning patent examination with businesses' needs.
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.
