Intellectual property rights are not vested in response to filing a patent application. By filing a patent application, a start-up company will receiving a filing date not patent rights. The filing date sets a cutoff date which any disclosures after cannot be used as prior art against the start-up during the process to be granted a patent. Although there are some pre-grant patent rights, patent rights are vested once the patent application is granted. This process is similar to real property, where you cannot sue someone for trespassing land that you don’t own.
For start-ups that operate in technology that rapidly evolves, changes entirely, or be non-existent in 5 years it can be critical to obtain patent protection as soon as possible. There are three main ways for patents to be granted quickly. The three methods include a relatively new procedure at the USPTO called “Track 1: Prioritized Patent Examination,” an accelerated examination system method, and narrow claim drafting.
Track 1: Prioritized Patent Examination is a way for companies to get prioritized examination at the USPTO for a fee at the time of filing an original utility application. The fee for prioritized examination is $4800 for large companies and $2400 for small entities. The goal of the prioritized patent examination process is to have a final decision on a patent application within a year of the filing date. There are several requirements for prioritized patent examination. The first is that a prioritized patent examination patent application must be filed via the patent office’s electronic web filing system (EFS), most if not all patent attorneys have an account that allows them to file an application via this route. However, individuals who are not patent attorneys seem to be precluded from self-filing applications on this track. Second, responses to office actions are required to be filed within 3 months of their mail date. If the response to the office action is transmitted after the 3 month period, then the patent application will be removed from the prioritized patent examination track and placed on an examiner’s normal docket. Third, the prioritized patent examination process has a limit on filed claims, 4 independent 30 total claims. Accordingly, the prioritized patent examination procedure is a way for companies to “jump the line” on a patent examiner’s docket at the USPTO but somewhat regular prosecution of the application can occur. I believe the prioritized patent examination route can be effective for start-up companies that work in rapidly evolving fields with long docket response times at the USPTO. If a start-up company is working in a communications field at the USPTO, it is likely that they will not receive their first office action until after 3 years from their original filing date. At that future point in time, their patent technology may have come and gone, such as mobile application which may have come and gone over the course of a year. Without having patent rights vested soon, infringing companies may no longer be around in 3-5 years when patent rights would have vested in typical patent examination.
The second route an “accelerated examination program.” In the accelerated examination program, a final decision on the application will be given within 12 months of the filing date of the application. There is an additional $125 government filing fee for a petition to file a patent under the accelerated patent program. To qualify for the accelerated examination program, applicants must prepare an examination support document that is filed with their application. The support document involves a prior art search and analysis of the prior art stating how your invention is different than what is already known. This does create major “patent prosecution history estoppel” which will be used against the applicant in litigation. Essentially, anything admitted to not being the invention or how the invention differs from the cited art cannot be claimed later to be part of the applicants invention. Additionally, a prior art search and analysis by the law firm filing your application can cost as much if not more than the patent application itself based on the technology. Additionally, examiner interview are required before the first office action, and before a final office action is given. In the accelerated examination program, responses to non-final office actions are required to be filed 1 month after the mail date, which if they are not filed within that time frame the application will go abandoned. To this end, the accelerated examination program is a way for companies to obtain patents relatively quickly. However, I believe that the requirement to narrow the scope of your application via the prior art search could outweigh the benefits of rapidly be given patent protection.
The third route to expedite the grant of a patent application is via narrowly claiming your invention. When an examiner looks at a patent application, the claims define what intellectual property rights are vested in a patent. For that reasons, applicants want broad claims to cover a wider ranges of technology. However, by narrowly defining claims, the patent examiner at the USPTO may not be able to find art that specifically teaches an element of the claim. For example, if an applicant’s patent application is directed towards mobile communications, the claims in the patent may describe specific types of modulation techniques that are used for the signal at specific times. However, by specifically claiming modulation techniques or transmission standards, if standards change in the future the granted patent will be worthless. However, for an applicant that desires a speedy patent process to obtain a patent (maybe to show investors), I recommend first filing a patent application with very specific claims. Once the patent is granted, file a “continuation” patent application having the same priority date as the first application with broader claims. The downside of this method is that if the applicant’s technology has a long backlog at the USPTO it may take 3 years for an examiner to look at the patent application, even if there is a first office acceptance.