Monday, July 8, 2013

Expedited Examination Experience

Since 2009, accelerated examination under the various programs has been requested for over 5,000 patent applications. The United States Patent and Trademark Office (USPTO) received the highest number of requests (3,533) followed by the UK Intellectual Property Office (UKIPO), with 776, and the Korean Intellectual Property Office (KIPO). USPTO stop receiving temporarily after 3500 applications were reached.

The evidence shows that fast-track procedures reduce the time from filing to grant by several years compared to ordinary examination. The time to grant is cut by between 42 percent and 75 percent across fast-track programs, with the shortest time to grant delivered by the UK.

For most programs, a very small share of eligible patent applications was submitted under the accelerated procedures: between one and two percent in Australia, Canada, Japan and the ROK. However, percentages were substantially higher in the UK (20%), Israel (13%) and the US (8%).

This low participation rate may seem surprising as a fast-track examination process offers several advantages, such as facilitating licensing and making it easier to raise private capital and enforce a granted right against infringers.

There are, however, some disadvantages in accelerating the granting of patents. To begin with, accelerated examination may increase costs for patent applicants, especially where they are required to conduct a search report on the prior art (for example, at the JPO) and submit comments that could have ramifications in litigation.

Another problem with fast-track programs is the wide variability in their rules — both in terms of eligibility and formal process requirements. Applicants seeking to participate in several of the programs must analyze a number of different rules, determine whether their invention meets each program’s eligibility requirements, and draft different claim sets and arguments for each program. As a result, deciding whether and how to use such programs can be costly and time-consuming.

Moreover, it is not always in the applicant’s best interest to have a patent published or granted as soon as possible. Although inventors may want to file a first (“priority”) application right away (because, until they do, they have nothing but secrecy to protect them from imitators), they may also have legitimate reasons for delaying the grant of a patent.

These disadvantages explain why only a small percentage of eligible patent applications are submitted to fast-track programs. Once a patent application is filed, infringers will be opposed on the basis of the application date and not the grant date. Most applicants therefore have an incentive to wait until the examination is conducted under the regular procedure. As a consequence, patent applicants would only have an interest in using fast-track programs under specific circumstances (such as suspicion of infringement, to raise capital or to secure commercial partnerships).

An important advantage of a long examination period is that it delays the costs associated with the grant of the patent. It also gives patent applicants time to determine whether the patent will be commercially viable before requesting the grant in the first place.

Another major benefit of delayed examination is that it allows applicants to adjust the patent application – in particular the list of claims – during the examination process. If granted too early, the claims of the patent might not perfectly match the final version of the invention, thus facilitating circumvention.

Since patent applications must be disclosed when the patent is granted, an early grant occurring before the end of the 18-month period after which patent applications are normally published could increase the risk of competitors being able to quickly design competing technology. Our interviews with patent attorneys revealed, however, that this is unlikely to be an issue in practice. Most requests for accelerated examination occur before this 18-month period – a further indication that early publication is not viewed as a serious issue by applicants. - WIPO

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