This is the second in a two-part blog series on controlling the speed of the patent process. (Read part one here.)
On average, it currently takes about two years for a patent to issue. Many businesses don’t want to wait that long, which is why we’ve detailed our seven favorite strategies to speed up patent prosecution in a separate post.
But sometimes, a pending patent application can be more advantageous to your business — meaning that you may want to explore your options for slowing down the patent process.
BENEFITS OF SLOWING DOWN PATENT PROSECUTION
While it’s not common for businesses to delay the patent process, there are several compelling reasons to do so in certain contexts:
1. USE PENDING CONTINUATIONS AS A DETERRENT
If you have an issued patent and a pending continuation for the same invention, this can create uncertainty about the scope of protection that you will ultimately get for the invention.
A continuation allows you to pursue additional claims based on an earlier-filed patent application that hasn’t been issued or abandoned yet, and so preserves that application’s pendency.
While the claims of an issued patent are essentially fixed for all time, you can amend the claims of the continuation at any time — giving competitors less incentive to:
- Design around your issued patent, because you might be able to cover their product with broader claims in the continuation.
- Challenge the validity of your issued patent, because you can avoid their challenges by crafting stronger claims in your continuation.
Ultimately, the pending continuation makes the issued patent stronger because it can be used to cure any flaws in the issued patent.
2. AMEND CLAIMS TO COVER COMPETITOR PRODUCTS
You can amend the claims of a pending application at any time before it becomes an issued patent. Delaying patent issuance would give you a bigger window of opportunity to respond to developments in your technological field.
As an example, if a feature of your invention is eventually incorporated into an industry standard or a major product, the patent rights to that feature would instantly become more valuable.
Having an application pending is the best way to ensure that you can craft claims to cover any features that become adopted in your industry.
3. SPREAD OUT (OR DEFER) THE COSTS OF PATENT PROSECUTION
The patent process isn’t cheap — and runs on a tight timeline. If you need more time to fundraise, slowing down the patent process can help you to secure a priority filing date while deferring your fee payment schedule.
4. DEVELOP YOUR BUSINESS FURTHER
If your product or business model is still evolving at the time of filing, you may need more time to know exactly what features of your invention are most valuable to your business.
Alternatively, you might simply want time to reevaluate the direction of your business, and refine your marketing and sales strategy. Either way, slowing down the patent process gives you more time to adapt the claims of your patent application to best serve your own business.
5. RESPOND TO CHANGES TO THE LAW
Patent statutes and USPTO regulations are rarely amended, but the USPTO’s policies and application of those statutes and regulations often change significantly over time.
So if you’ve received a rejection that deals with an evolving issue, sometimes the best thing to do is to wait for USPTO policy to change in your favor.
One good example concerns Section 101 rejections (where your application is deemed invalid due to subject matter eligibility). Andrei Iancu, the new USPTO director, recently introduced a new policy that clarifies the boundaries for 101 rejections. So if you’ve previously received a 101 rejection, you may be able to overcome it under the new policy; for starters, it’s already benefited some of our clients!
DRAWBACKS OF SLOWING DOWN PATENT PROSECUTION
Delaying the patent process has its drawbacks, too:
1. INCREASED TOTAL COSTS
Most of the options we’ll discuss below involve higher government fees (and if your attorney has to spend more time on your application, higher attorney fees as well).
The fees will be distributed over a longer period of time, but the overall costs you’ll incur will still be higher.
2. DELAYED ENFORCEMENT
You can’t assert your patent rights against infringers until the actual patent has issued. With good reason, many tech companies place the highest priority on getting whatever patent rights they can as quickly as they can — bird in the hand.
6 OPTIONS FOR SLOWING DOWN PATENT PROSECUTION WITH THE USPTO
Your options for delaying patent prosecution will depend on where you are in the process: whether you’re just about to begin filing, or have already received a final office action.
1. FILE A PROVISIONAL PATENT APPLICATION
If you haven’t begun the patent process yet, you can use a provisional patent application to secure an early filing date — while gaining an extra year to refine your invention.
Provisional applications aren’t substantively examined, and can be filed more quickly and cheaply than a non-provisional application.
To receive a patent, though, you must file a corresponding non-provisional application within one year.
Your provisional application also must support all claims in the non-provisional application. You won’t enjoy the benefits of the earlier filing date for any new details added in the non-provisional application.
2. ENTER THE UNITED STATES VIA PCT
Instead of filing a U.S. non-provisional application, you can file a PCT (international) applicationand delay prosecution until the national stage — which buys you up to 30 months of additional time.
While the PCT application will be examined during the international stage, you don’t have to respond to rejections or take any other actions until you file national stage.
Then, within 30 months of the earliest claimed priority date, you must “nationalize” your application in the individual jurisdictions where you want to receive a patent.
(Learn more about how to enter the United States via PCT.)
3. FILE A CONTINUATION WITHOUT PAYING USPTO FEES
If you’ve already filed a non-provisional application, you can prolong its pendency by filing a continuation application to pursue additional claims — but without paying the associated fees upfront.
This delay can be especially advantageous given that the filing fees for a continuation application are the same as a new non-provisional (between $1,000–$2,000).
Because the fees are required to complete your application, the USPTO will ask you to respond to a Notice to File Missing Parts, which gives you up to six months of extra time.
And sometimes, the USPTO takes a month or more to issue the Notice to File Missing Parts. Since the response deadline is measured from the date of the notice — not the filing date — you could end up getting more than six months of extra time.
4. TAKE MAXIMUM EXTENSIONS OF TIME
|Length of extension||Fee||Small entity fee|
|Within one month||$200||$100|
|Within two months||$600||$300|
|Within three months||$1,400||$700|
|Within four months||$2,200||$1,100|
|Within five months||$3,000||$1,500|
5. FILE AN RCE WITH A REQUEST TO SUSPEND PROCESSING
If your patent application is in active prosecution and you want to buy some time, you can file a request for continued examination (RCE) with a request to suspend processing. This will delay the process for up to three months.
If you’re at a stage where you already have to file an RCE to reopen prosecution, it may be cheaper to buy extra time by suspending processing instead of requesting extensions of time:
|Action||Fee||Small entity fee|
|RCE: first request||$1,300||$650|
|RCE: second and subsequent requests||$1,900||$950|
|Processing fee |
(when you request to suspend processing)
6. FILE AN APPEAL AND THEN FILE AN RCE
If your patent application was rejected, you can file an appeal — which (typically) adds at least two to four years to your application’s pendency.
To appeal a rejection, submit a notice of appeal, followed by an appeal brief. You’ll receive the examiner’s written response to the brief, then your application will go into a queue in the USPTO appeals process.
It can remain pending on appeal for several years — until a decision is made by the Patent Trial and Appeals Board (PTAB).
If you pursue this option, you’ll incur the following USPTO fees:
|Action||Fee||Small entity fee|
|Filing a Notice of Appeal||$800||$400|
|Filing an appeal brief||$0||$0|
Note that you’ll also incur additional legal fees to draft the Appeal Brief, which can be quite technical.
To pull your application out of the appeal queue earlier, you can file an RCE to reopen prosecution before the examiner.
WHEN CAN I EXPECT TO INCUR COSTS DURING THE PATENT PROCESS?
Patent prosecution can be an expensive and time-sensitive affair. Be prepared to meet your deadlines and pay the associated fees — or risk jeopardizing your IP assets.
Any skilled patent counsel will help you navigate these murky waters of speeding up or slowing down the process. But if you’re looking for a quick guide to the costs associated with building your patent portfolio, look no further: Our FREE infographic, “The Cost of the Patent Process,” lays out when patent-related fees and documents are typically due. Download it now to determine whether you’re really ready to get started!
HOW MUCH DOES IT COST TO PURSUE PATENT PROTECTION? IT’S A QUESTION ON EVERY BUSINESS OWNER’S MIND.
Need to find out how much you’ll spend and when? We’ve created a free infographic to help you plan for the costs associated with securing protection for your intellectual property.
- Costs to expect during the patent process — so you’re not surprised or unprepared for fees
- Breakdowns of official government fees versus legal fees
- Where costs occur during the patent-protection timeline
- The cost of patent protection in a number of foreign countries
Fill out the short form on this page to get the infographic now.
GET THE INFOGRAPHIC
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.