USPTO’s fast-track patent examination: Does the potential for earlier patent issuance justify the cost?

The new, expedited process can cut patent wait times from more than three years to just a few months

When a company successfully secures an issued patent from the U.S. Patent & Trademark Office (USPTO) on an important discovery, technological advancement or other new and useful invention, it can boost the company’s valuation or reputation in the marketplace. For example, a patent issuance can favorably position the company for transactions with investors, or a purchaser, by demonstrating strength in the company’s intellectual property position and the ability to prevent competitors from entering or effectively competing in the company’s market. Issued patents can also serve as market differentiators to existing or potential customers who perceive value in the patented technology or otherwise create a buzz about the company in an industry. Bearing this in mind, it is generally better from the company’s perspective for its patent applications to issue as patents sooner rather than later. But what is the cost of seeking expedited issuance of a patent and what are the potential benefits?

Companies generally understand that they need to file patent applications on their inventions quickly in order to protect their rights. Currently, however, the applicant has a choice as to how quickly the USPTO examines each patent application, and the applicant’s decision in that regard is not as clear. Last year, the agency enacted a Track I Prioritized Examination Program as part of the America Invents Act. Under the program, the USPTO aims to complete its examination of a patent application within roughly a year or less, and sometimes as quickly as a few months. Thus, so long as the subject matter of the patent application is new and nonobvious from the prior art and meets other threshold requirements for patent eligibility, the agency should issue a patent within a year or less. In contrast, traditional or normal-track examination typically takes more than three years.

Contributing Author

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Peter Snell

Peter Snell is a Member in the Intellectual Property Section of Mintz Levin's New York office. Peter litigates patent infringement, patent invalidity and other intellectual...

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