Yesterday, Harold Wegner emailed his readers regarding the USPTO's prioritized examination which permits a final disposition (allowance or final Office action) within 12 months of the filing date. It's a pay to play procedure: a large entity pays $4,000, a small entity pays $2,000, and a micro entity pays $1,000. But pre-filing search is avoided which can be expensive and risk a court challenge.
Given prioritized examination may result in allowance five months after the petition and the USPTO rarely declines it, I found it surprising only 1% of applications are requesting prioritized examination. Mr. Wegner says the USPTO granted prioritized examination for 6,693 applications of about 600,000 applications filed in FY 2014. The USPTO dashboard indicates traditional pendency is about 27 months.
Part of the answer may be a cost-benefit decision. Applicants are unwilling to pay these fees to get a final disposition sooner, since it might not result in an US patent, but a final action rejecting all of the claims. Harold Wegner notes "an informed colleague disputes prioritized examination as a metric to judge how many applicants want a speedy patent grant: 'A great majority of my clients would like a decision within one year. The problem is that the USPTO has never been able to play it straight. All of the programs that speed examination have had a much lower success rate for the applications that were expedited. To get a final rejection sooner is not the point at all.'"
In contrast, Mr. Wegner said another claims: "we use the prioritized examination system quite regularly. With every application, so far, we have received a Notice of Allowance, usually within 6 months. The trick is to file the prioritized application as a continuation of an already pending application and submit narrow, picture claims directed to the commercial embodiment, and leave the broader claims to the parent application. I’m a huge fan of the prioritized system and it has worked very well for my clients."
Here's a couple of factors one might consider during the cost-benefit analysis: (1) will the patent claims be infringed upon issuance; (2) will investors or acquirers give you an increased valuation that will pay for having patents vs. applications (note you may see your valuation decrease a bit if the application(s) are under a final rejection); and (3) does the technology have a short "half-life," i.e., is having a patent within one year much better than two years from now?
Copyright © 2014 Robert Moll. All rights reserved.
