US patent procedure, compared to UK and European patent procedure, is getting longer and longer so the US government is implementing a strategy to reduce time to grant.
For an inventor outside of the United States of America, a US Patent Application can be cost-effectively filed either before the 12 month deadline of their domestic patent application, for example, a UK Patent Application, or within 30 months of the priority date of their PCT Worldwide Patent Application.
However, the US Patent and Trademark Office (“USPTO”) is currently estimated to have a backlog of around 700,000 patent applications which are waiting for examination. With this in mind, an applicant is presently having to wait nearly three years from filing to receive grant of their patent.
In comparison to a UK patent application which can take up to four and a half years from filing to grant and to a European patent application which can take four or more years from filing to grant, this is still relatively quick.
However, unlike the UK and Europe patent procedures, there is no specific request available for expedited examination, unless an applicant is over a certain age or the invention relates to a ‘green’ technology. In the UK, a patent applicant can request accelerated examination if a licence agreement is available, or if infringement is of a concern. In Europe, the PACE (Programme for Accelerated Prosecution of European patent applications) request can be used to accelerate the European patent application process without requiring any specific reason.
The strategy consists of a Three-Track initiative. In Track 1, an applicant can choose to pay a premium for accelerated examination, enabling their patent to issue 12 months from its filing date.
In Track 2, their patent will be examined as per the current procedure.
Track 3, which is the slowest and least expensive, delays examination by up to 30 months more than the current procedure.
Overall, the Strategy aims to reduce the backlog of patent applications and the average delay of getting a patent to grant to 20 months by 2015.
The Strategy for American Innovation system will allow companies to prioritise their applications, with those considered most valuable to have the potential to grant most quickly. Patent portfolios can be built up at a faster rate and the Strategy for American Innovation gives more flexibility in controlling the costs involved with obtaining a granted US patent.
The money raised from those paying the premium associated with Track 1 will be used by the USPTO to improve and upgrade their in-house systems, and to make it possible to carry out this fast-track examination of patents. The USPTO is also planning to employ an extra one thousand patent examiners over the next two years, and the Strategy also includes a post-grant review procedure to improve the quality of the patents.