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Expedited Patent Examination: Understanding Your Options In The US And Abroad – Patent


Speeding up patent prosecution and quickly obtaining an issued
patent is generally a good thing.

The earlier a patent is issued, the earlier it can protect a
product and be enforced against third party infringers. And since a
U.S. patent typically expires 20 years from filing, fast issuance
provides a longer term of protection and accelerates the building
of value in a product or business.

Accelerated prosecution also can create a variety of other
benefits:

  • Alignment of the product lifecycle with patent protection
    maximizes return on investment in patent protection and can enhance
    the expected revenue stream of a product or business.

  • Investors or acquirers can understand and assign value to a
    group of already issued patents, as opposed to the uncertain
    potential of pending applications.

  • Having early patent office examination results, and potentially
    patents in hand, provides information useful in formulating
    prosecution strategies and making business decisions.

  • For products requiring regulatory review, such as
    pharmaceuticals, early issuance of a patent can also maximize the
    patent term extension available.

  • An allowed patent in one country can be leveraged to accelerate
    examination in other countries, reducing the overall time and cost
    of prosecution across an entire portfolio.

What follows is a brief overview of some of the programs
available to applicants for accelerating prosecution in selected
patent offices around the world, as well as an example “use
case.”

United States

The U.S. Patent and Trademark Office (USPTO) provides several
accelerated programs for patent prosecution.

The Track One program, which requires a $4,200 fee, allows
expedited examination of a new or pending patent application with a
goal of reaching final disposition of the application within 12
months.

The Climate Change Mitigation Pilot Program allows applications
involving technologies that reduce greenhouse gas emissions to be
advanced for examination until the mailing of a first action on the
merits.

The Cancer Immunotherapy Pilot Program offers expedited
examination of patent applications related to cancer immunotherapy,
with a final decision issued within one year.

The USPTO participates in Patent Prosecution Highway (PPH)
programs (e.g., Global Patent Prosecution Highway (GPPH) or IP5
PPH) for either a U.S. direct application or a U.S. national phase
application related to a Patent Cooperation Treaty (PCT). Under
this program, claims allowed in corresponding applications in
participating patent offices can be a basis for accelerated
examination of substantially identical claims in the USPTO.

Australia

The Australian Patent Office (IP Australia) offers expedited
examination if the invention of a patent application is in the
field of green technology, giving priority to environmentally
friendly technologies.

If the applicant is a small or medium enterprise, expedited
examination (i.e., fast-track examination that may begin within
four to eight weeks) can be obtained at no additional cost.

IP Australia also participates in the GPPH.

Brazil

The National Institute of Industrial Property (INPI) of Brazil
has a program for expediting examination of patent applications in
Brazil, particularly for technologies involving pharmaceutical
products or processes and health-related equipment and/or products
that can contribute to diagnosing and treating AIDS, cancer, rare
diseases and neglected diseases.

In addition, INPI provides priority examination for patent
applications related to green technologies.

INPI also participates in PPH programs.

Canada

The Canadian Intellectual Property Office (CIPO) offers
accelerated examination process (AEP) for green technology patent
applications that relate to mitigating environmental impacts or
conserving the natural environment and resources.

CIPO also participates in PPH programs.

China and Taiwan

The Chinese National Intellectual Property Administration
(CNIPA) offers Measures on Prioritized Examination of Patent
Applications (MPEPA) to expedite examination of patent applications
that relate to energy conservation and environmental protection, as
well as the generation of information technology (e.g., internet,
big data or cloud computing), biology, high-end equipment
manufacturing, new energy, new materials, new energy vehicles,
intelligent manufacturing, and other key national development
industries and technical fields.

The Taiwan Intellectual Property Office (TIPO) also offers an
Accelerated Examination Program (AEP), under which an application
is eligible for accelerated examination after entry into
substantive examination. AEP is also available for applications
directed to green technology implementation.

Both CNIPA and TIPO also participate in PPH programs. (CNIPA
typically issues a first Office Action within about nine to 12
months after PPH requirements are met, and TIPO typically issues a
first Office Action within about two to four months after PPH
requirements are met.)

Europe

Requests for Accelerated Examination in the European Patent
Office (EPO) are made under the EPO PACE Program. Once requested,
the EPO will aim to issue an Office Action within three months. No
fee is required with a PACE request.

EPO also participates in PPH programs, but applies EPO standards
for assessing added matter in applications examined under the
PPH.

There are other aspects of EPO prosecution that can be
accelerated as well – e.g., by waiving the Rule 161 option to file
voluntary amendments and the “wish to proceed”
communication when a PCT application first enters the Regional
Phase in Europe.

Japan

The Japanese Patent Office (JPO) offers Accelerated Examination
(AE) procedures or Super-Accelerated Examination (SAE) procedures.
If the patent application has a counterpart filed at a Patent
Office other than the JPO (e.g., the USPTO), the applicant or its
licensee can request AE regardless of the results of the
examination of the counterpart. If the applicant or its licensee
practiced or plans to practice the invention within two years, SAE
can be requested. Average duration to obtain a first Office Action
is about three months for AE and about one month for SAE after
starting the examination procedure. These times can be delayed if
the application is a Japanese national phase of a PCT application.
Thus, filing a Japan-direct application via the Paris Convention is
recommended.

JPO also participates in PPH programs, but PPH generally offers
no advantage over AE and SAE.

Republic of Korea

The Korean Intellectual Property Office (KIPO) provides
accelerated examination if a preliminary search report prepared by
a KIPO designated search organization is submitted.

KIPO also participates in PPH programs.

New Zealand

The Intellectual Property Office of New Zealand (IPONZ) offers
expedited examination for applications directed to green technology
or clean technology.

IPONZ also participates in PPH programs.

Example Use Case

An applicant concurrently files both a PCT application and a US
non-provisional application. The applicant then requests Track One
examination in the US, which may lead to allowance in as little as
12 months. After allowance of the US case, the applicant proceeds
with early national phase filings from the PCT in countries of
interest, utilizing the PPH based on the allowed Track One US
claims. Results may vary in individual countries, but expedited
allowance with fewer office actions may generally be expected.

Planning

To take advantage of these and other programs, patent applicants
should first consult with counsel to develop a strategy. Please
contact Scott Warren at swarren@foxrothschild.com, Joohee Lee at
jooheelee@foxrothschild.com, or any member of Fox Rothschild’s
national Patent Law Practice Group.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.



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