Should you accelerate your patent applications?

We often find ourselves helping companies reconsider their IP strategy in view of the way that their company evolves. We are often finding that there is no IP strategy at all or that the company has not been thinking things through.

In a previous note, I covered the issue of where to file the first patent application and addressed the strong connection that this question has to the secondary issue of the pace in which the application will be examined.

I would like to now focus on the issue of the pace and add some further notes on when should companies consider accelerating the prosecution of their patent applications.

First, let’s try to see when is it POSSIBLE to accelerate the prosecution of applications?

  1. In some jurisdictions, all you need to do is ask. For example, a European patent application can be accelerated simply by filing a PACE request. There is no fee to pay or criteria to meet.
  • In some, you need to ask and pay a fee. You guessed right – a US application can be accelerated by paying a fee of $4,000 for a large entity, $2,000 for a small entity and $1,000 for a micro entity. This is not the only option for accelerating in the US, just one.
  • In other cases, you can supply your own reason. This can be an investor demand, a competitor breathing in your neck, or other reasons.
  • Finally, and perhaps most importantly, applications can be accelerated when equivalent applications in the same family in other jurisdictions are being granted, using a series of convention called “the patent prosecution highway”. In some countries, it is possible to use a positive PCT search report as the basis of acceleration.

Now, when would it be a good idea to accelerate a pending application?

  1. When it is likely to be granted – when you already have a search report, either from your jurisdiction or from another jurisdiction and you have a strong reason to believe that the patent will be granted, it makes sense to rush it through examination as quickly as possible. Examiners change, new prior art publishes, new examination reports issue in other corresponding applications and time generally gives examiner more, and not less, reasons to reject applications. Capitalising on what is likely to be granted saves time, pain and money.
  • When the shareholders care – for some companies, a granted patent pleases the shareholders, be those board members, investors, capital markets or others. If a granted patent makes a difference, getting it sooner also makes a difference.
  • When the families are large – when the patent family has many applications, it typically means a lot of disclosure requirements, primarily in the US but also in other jurisdictions. The disclosure requirement ends when the patents are granted, so it makes sense to rush those members of the family where disclosure is needed.
  • In technical spaces with crowded art – if you have a reason to believe that relevant art may publish, it often makes sense to get your patents granted ahead of it.
  • When you care about the overall budget more than cashflow – it is typically less expensive to manage a portfolio of granted patents rather than a portfolio of applications. Conversely, rushing applications mean bringing forward costs. So there is a balance between cash flow and overall cost. If you care more about overall cost, rush your patents.
  • When there is a competitor in sight – if you see litigation in the horizon, your applications won’t help you much. You will need a granted patent to take them to court. At the same time, if you do see litigation in the horizon, you would want to file divisional and continuation applications to keep all your options open, so many of the arguments made above would be irrelevant… It would be neither cheap nor efficient, but it may just well be the way to derive the best value from your patents.

When would it be a bad idea to accelerate a pending application?

  1. When it is questionable whether you can get them – if your applications are weak, you may want to keep them going and not challenge them too much. It may be that you have them for vanity and window-dressing and never want them examined… and rejected!
  • When cashflow is more important than total cost – bringing prosecution forward impacts cash flow so if you want to postpone expenses, it makes sense to not request acceleration.
  • When the invention is still evolving – if you filed a patent very early and the invention is still evolving, it is often preferable to buy as much time as possible to better inform the prosecution strategy when you know more.

Originally posted 2019-03-13 14:10:30.

Zeev Fisher


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