Obtaining a patent has traditionally been a long process, which is particularly burdensome for software patents. But it doesn’t have to be that way.
As of March 2014, the average time between filing of a patent application and having that application examined by the U.S. Patent and Trademark Office (“USPTO”) is 19 months, and the average time to final disposition (i.e., Final Rejection, Notice of Abandonment, or Notice of Allowance) is over 3 years. Software products are usually developed and launched within months, if not weeks, so taking a long time to get a patent can render the patent useless in deterring copycats.
Certain programs, however, are available from the USPTO that let applicants get an issued patent within months, not years. That timeline provides an effective way for companies in the software industry to protect their products upon release with patents that will deter others from copying their technology. While many of these programs have already been available for a few years, we frequently meet with in-house counsel who are surprised to hear they exist, so they’re worth highlighting. The programs can be used independent of one other or combined to minimize examination delays and maximize the value of an applicant’s filing fees.
For example, Track One Prioritized Examination (“Track One”) allows an applicant to get a final disposition from the USPTO within twelve months from when the application is filed and granted prioritized status (if the applicant is willing to pay an additional fee). As of March 2014, the average time from filing an application and obtaining Track One authorization to final disposition is about 8 months, compared to more than 3 years for applications under regular examination.
This substantial difference in time can be a major benefit to a software company and can easily be worth the fee associated with participating in Track One. After receiving a first examination on the merits (a first “Office Action”) for a Track One application, it is recommended that an applicant request an interview with the assigned patent examiner to discuss the examiner’s rejections and/or discuss proposed amendments. Such an interview allows the applicant an opportunity to clarify the claimed invention and aids in streamlining the patenting process.
Another program, the First Action Interview Pilot (“FAIP”), provides an applicant with an opportunity for an interview with the assigned patent examiner for a patent application prior to a first Office Action. For applications participating in FAIP, the first action allowance rate is 30.2% compared to 13% for other patent applications. In the FAIP program, the patent examiner first conducts a search for prior art. Then the examiner provides the applicant with a pre-interview communication, citing any relevant prior art from the search and identifying any rejections of the patent application’s claims in view of the prior art. Thereafter, during the interview, the prior art, proposed rejections, any proposed amendments, and arguments are discussed. There are no additional fees associated with FAIP.
Yet another program, the After Final Consideration Pilot (“AFCP”), provides patent examiners with additional time to consider an applicant’s responses after a final rejection is issued by the USPTO. Typically, an applicant files a response to a final rejection, and then the assigned patent examiner issues a Notice of Allowance or an Advisory Action. That advisory requires the applicant to file a Request for Continued Examination (“RCE”), if possible, which costs between $600-$1200, in order to continue examination.
Filing a RCE results in extending the life of the examination process, with the average time from filing an RCE to the next Office Action being about seven months. By providing additional time for examiners to search and/or consider responses after final rejection and before filing a RCE, the AFCP helps applicants in many cases avoid filing of an RCE. Under the AFCP, examiners may conduct an interview with the applicant if the applicant’s response to the final rejection does not place the application in condition for allowance. Even when the results do not lead to allowance, the applicant still benefits from the additional time afforded by the program, as feedback from the examiner helps the applicant better anticipate the substance of the next Office Action. There is no fee associated with a request to participate in AFCP.
Finally, the Patent Prosecution Highway (“PPH”) program allows for an applicant receiving a favorable ruling from one patent office to receive expedited examination in another patent office. For example, if an applicant receives a Notice of Allowance for a patent application from the USPTO, examination of an unexamined patent application filed in another foreign patent office corresponding to that U.S. patent application can be expedited to begin within 2-3 months using the Patent Prosecution Highway. The foreign patent office can utilize the examination results of the USPTO, thereby avoiding duplication of work, creating consistency in outcome, and resulting in faster examination. Similarly, if claims are determined to be allowable in a foreign jurisdiction, an applicant may use the PPH to expedite examination with the USPTO. PPH is available in many foreign jurisdictions where patent protection for software companies would be desirable, such as Europe, Canada, and Japan, among many others.
From the beginning to the end of the patenting process, these programs, used in conjunction or individually, may help a software company get a patent within months of applying for one. Software companies interested in quickly gaining patent protection for their products would be wise to utilize these programs to protect and enforce their intellectual property, increase their commercialization opportunities, attract capital, and reduced any perceived risk seen by their investors or licensees.
Ahsan A. Shaikh is a partner in the law firm of McDermott Will & Emery LLP and is based in the firm’s Silicon Valley office. Ahsan’s practice is focused on strategic patent portfolio management and client counseling in the areas of software, computer hardware, internet technologies, and medical devices.
Dwight Yun Kim is an associate in the law firm of McDermott Will & Emery LLP and is based in the firm’s Orange County office.