Tonight, I suggest reading the Washington Post's article Google has gotten more fast-track patents than any other company. As stated, "Google has obtained 875 fast-track patents, about 14 percent of the 6,187 expedited patents that have been issued by the U.S. Patent and Trademark Office since the program began in 2011, according to data provided by the agency."
Copyright © 2014 Robert Moll. All rights reserved.
Showing posts with label prioritized examination. Show all posts
Showing posts with label prioritized examination. Show all posts
Saturday, November 1, 2014
Saturday, August 30, 2014
USPTO - Prioritized Examination - That Rare and Controversial Bird!
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.
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.
Thursday, March 20, 2014
USPTO - Prioritized Examination
USPTO prioritized examination enables an applicant to get a final decision on patentability of an application within 12 months.
Prioritized examination can be made for original applications (Track One) and for a request for continued examination (RCE).
The USPTO fees for prioritized examination are $1,000 for a micro entity, $2,000 for a small entity, and $4,000 for a large entity. Legal fees are typically small, because the request form is easy to complete and more importantly requires no pre-filing search.
Although prioritized examination limits requests to applications with no more than four independent claims and 30 total claims, most US patent applications fit within the limits.
In a backlogged field such as software where delays in initial examination can stretch over years, prioritized examination can result in competitive advantage.
Caveats: if the invention lacks patentability, prioritized examination will rapidly inform of the unhappy news, which may not be consistent with a wish to merely report "I have a patent pending." It also will front-load the prosecution fees.
See USPTO Prioritized Patent Examination Program for the request form, a quick guide, the final rules for prioritized examination, and some FAQs.
Also see the USPTO Notice Changes to Permit Delayed Submission of Certain Requirements for Prioritized Examination.
Copyright © 2014 Robert Moll. All rights reserved.
Prioritized examination can be made for original applications (Track One) and for a request for continued examination (RCE).
The USPTO fees for prioritized examination are $1,000 for a micro entity, $2,000 for a small entity, and $4,000 for a large entity. Legal fees are typically small, because the request form is easy to complete and more importantly requires no pre-filing search.
Although prioritized examination limits requests to applications with no more than four independent claims and 30 total claims, most US patent applications fit within the limits.
In a backlogged field such as software where delays in initial examination can stretch over years, prioritized examination can result in competitive advantage.
Caveats: if the invention lacks patentability, prioritized examination will rapidly inform of the unhappy news, which may not be consistent with a wish to merely report "I have a patent pending." It also will front-load the prosecution fees.
See USPTO Prioritized Patent Examination Program for the request form, a quick guide, the final rules for prioritized examination, and some FAQs.
Also see the USPTO Notice Changes to Permit Delayed Submission of Certain Requirements for Prioritized Examination.
Copyright © 2014 Robert Moll. All rights reserved.
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