obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

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Patent It Without The Wait: Part 1

by Bruce Jobse

Protecting innovation in a product is critical to maintaining a market advantage, particularly for consumer goods, electronics, medical devices, etc., whose design and function can be observed from simple use.  Once these products launch, they lose most of their trade secret protection, leaving only patent rights to prevent competitors from copying key structural and/or functional features.  However, obtaining a patent in the time between idea conception and product launch is nearly impossible in the most technical fields.  The backlog of unexamined patent applications before the USPTO, forces inventors, small businesses and corporations alike, to wait years after the launch of their best-selling products before patents protecting the same have issued.  Patent applications dealing with software, electronics, business methods, telecommunications and medical device technologies, often sit for 4-5 years before being initially examined by the USPTO. Although an applicant can represent a product as patent pending once the patent application has been filed, patent rights cannot be enforced until the patent actually issues.

No one wants to wait that long for a patent, so why not cut the line?  The USPTO’s Accelerated Examination (AE) process offers just that opportunity.

Started several years ago, the AE process, which requires the applicant to perform a self-examination of their own application, has been gaining popularity.  According to USPTO statistics, the average length of time from the acceptance of an application into the AE process until a notice of allowance, is approximately 10 months; however, it can also be significantly shorter.  Recently, one of our clients with an innovative mechanical device, received an initial call from the patent examiner indicating allowable subject matter within days after the application was accepted into the AE process. The entire end-to-end process, from application filing until patent issuance, took less than 6 months.  Now that’s service!

Patents issue from approximately 82% of all applications accepted into the AE process, versus less than 50% of all applications examined under the normal process.  Not surprisingly, corporations looking to rapidly grow their patent portfolios can utilize the AE process to their advantage, particularly those in highly litigious technical fields, or those with pioneering technologies.  For example, IBM Corp., the number one patent grantee of US patents year after year, has filed approximately 90% of all accelerated examination to date.  In the next post we’ll discuss the AE process in greater detail.

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