by: Kathleen Kuznicki, Esq.
When people come to talk with me about patenting their inventive idea, inevitably this question arises: “How long will it take to get a patent?” When I tell them the patent approval process will probably take close to three years, their jaws drop in surprise. “Really, it’s going to take that long?” YES.
I know it is disconcerting, an innovator spends all that time and effort developing an inventive product or process, spends all that time and effort to market or license their invention, and spends all that time and effort working with an attorney to translate their invention into a patent application, at great financial cost and risk to themselves, just to have their patent application languish at the United States Patent and Trademark Office (USPTO). In this article I am going to discuss the process at the USPTO and some of their metrics (as of February 2014) to explain why patent application pendency at the USPTO is so long. So even though you may not like the long pendency, you will understand why.
The Short Answer
The USPTO is being swamped with patent applications and does not have enough examiners to process them. Also some applicants will fight the USPTO to the “bitter end” to get a patent issued through the USPTO’s various procedures. This causes an examiner to file several actions against an inventive concept, increasing the overall prosecution time, and ultimately causing the whole patent application system to back up.
The Long Answer — The Patent Approval Process
In 2012, the last year for which statistics are available, 542,815 patent applications were filed. The last several years have seen a steady rise in patent application filings, with 2005 being the last year that less than 400,000 patent applications were filed (390,733). As of February 2014 there are 7,966 patent examiners with a backlog of 604,692 patent applications to be examined. This backlog is down from September of 2011 when the backlog was over 700,000 patent applications.
The longest stretch of time for an applicant is actually waiting for their patent application to be examined initially. As of February 2014 the average pendency before the first office action is 18.1 months (down from 27 months in Oct. 2011) with an average total pendency of 28.1 months for final disposition of the patent application, i.e. an allowance or an abandonment (down from 34 months in Oct. 2011). An allowance means that the claims were accepted by the examiner and that a patent will issue from the application. An abandonment means that the applicant is no longer pursuing a patent, i.e. they give up on the application. For those that give up after the first office action, the average disposal time will average approximately 24 months (applications are abandoned if there is no response within 6 months of the mailing date of the office action). For those that choose to go on and fight after their first office action, the disposition time will be closer to the three year mark.
The final disposition rate stated above does not include prosecutions that are continued by the filing of Requests for Continued Examination (RCEs), which occurs after the second office action which is usually deemed a final office action. If an applicant wants to fight and make further arguments and/or amendments to get an allowance after a final office action on a specific application, they must file the RCE and pay the additional cost. The final disposition rate average is increased to 37.9 months when RCEs are included. Applicants may also choose to file a continuation, a divisional, or a continuation-in-part application that claims priority to an original parent application that is given a final disposition. Though these child applications are considered new applications for the USPTO timing metrics discussed above, they contribute the backlog of applications that need to be examined. One inventive concept may have several patent applications pending at the USPTO.
For those who wish to have a quicker disposition of their patent application, applicants can opt to file for Prioritized Examination. The goal for applications filed under Prioritized Examination is to have a final disposition within 12 months of prioritized status being granted. There are some restrictions for these applications. There can be no more than 4 independent claims, no more than 30 total claims and no multiple dependent claims. There is also a substantial fee – $4,000 for non-small entities, $2,000 for small entities and $1,000 for micro-entities. At this time the USPTO is limiting the total number of applications granted prioritized status to 10,000 per fiscal year. For fiscal year 2013 a total of 6872 prioritized examination requests were made, with 6333 of them granted prioritized status (14 remain pending). For fiscal year 2014 so far there are 3,774 prioritized examination requests with 2,645 of them being granted prioritized status and 986 remaining pending. The pendency for the first office action on prioritized examination applications has averaged 2.46 months with a total pendency to a final disposition on these applications averaging 6.55 months. The USPTO also has Accelerated Examination Programs, but these have very specific requirements and are too complex to go into detail here.
So if you wish to pursue getting a patent issued on your inventive concept, you need to be patient and you need to be prepared to wait!!
Kathleen Kuznicki is a contributing writer to Exit Promise. Please visit www.exitpromise.com to view more articles by Kathleen.