Patent Applications – Timetable
Our clients commonly ask us how long it actually takes for a patent application to issue as a patent. Although there is no set time period, it is not unusual for 3-5 years to pass before the patent Examiner to pick up the case for examination. That delay can sometimes have a severe impact to the patent applicant by holding up the marketability of the invention and the ultimate value of the patent; especially for software inventions that can be obsolete within a few years.
Naturally, clients want to know whether it is possible to expedite the patent examination process. The Leahy-Smith America Invents Act of 2011 introduced a new procedure for accelerating examination, called Prioritized Examination. As of September 16, 2011, an applicant could request prioritized examination by simply filing a Request for Prioritized Examination along with a government fee of $2,400 (double, if the applicant is a large entity having over 500 employees, or licenses the technology to a large entity) to the Patent Office.
Several restrictions are imposed to take advantage of the Request for Prioritized Examination procedure:
- The request must be submitted when the Patent application is initially filed;
- The Patent application must be complete, including the government filing fees and submission of inventor’s declaration;
- The Patent application must be filed electronically;
- The Patent application cannot have more than four independent claims and thirty total claims.
The Patent Office set a goal to finally dispose of prioritized cases within twelve months of the request being granted. In the year that the new procedure has been available, the Patent Office reports that prioritized cases have received initial office actions within 1.64 months and final disposition within 5.19 months of the request being granted.
In determining whether it is advisable to pursue prioritized examination, it is recommended to discuss your situation with a patent attorney.
