What are effective strategies for getting a patent faster?
Getting a utility patent can be a long and expensive slog. The utility patent process is fraught with obstacles that may tempt you to feel discouraged. Don’t expect quick and easy results. Without sugarcoating the burdensome process of obtaining utility patents, let’s explore some realistic strategies that may help you get a patent granted sooner.
The time from the application filing date to the examiner’s first substantive review of your application is known as First Office Action Pendency. USPTO statistics show this average waiting period as 15.5 months (as of the date of this post). Certain examiner groups, known as art units, may take significantly longer due to the backlog of patent applications in certain technologies. To cut in front of the line, see my article on how to speed up your patent application.
What are patent strategies to shorten the time leading to examiner’s first review?
Keep in mind that queue-jumping strategies may not necessarily reduce the number of rejection letters by the patent examiner, known as Office Actions. So even though it helps to reduce the First Office Action Pendency by several months, you will need different strategies for contending with Office Action rejections. One strategy is to try to minimize the number of Office Actions.
How to Reduce the Number of Office Actions
Expect that roughly 90% of utility patent applications will receive at least one Office Action. Rather than expecting the rare 10% probability of receiving a first action allowance, focus on how to deal with the inevitable Office Actions.
One strategy is to conduct due diligence even before applying. You can search Google patents yourself. If you don’t find a close match, you can then consider a professional patentability search to identify what already exists in the prior art. Possessing this knowledge at the pre-filing stage allows your patent attorney to draft independent claims in a better condition at the outset. At least you will not start with independent claims that cover the prior art you already know. This pre-filing strategy might not save you from an Office Action, but it can lead to a more targeted prior art search by the Examiner. This will set the stage for a more effective examination process.
Talking to the Examiner often accomplishes more than what a written response alone can do. Your patent attorney may be able to sense any confusion or resistance in the Examiner’s tone, and gauge their feedback on proposed claim amendments. Even if the interview does not lead to an allowance (they rarely do), you will at least gain the knowledge of what will not work with this particular Examiner.
That is why I was a big fan of the First Action Interview program before it was terminated. Nevertheless, a productive conversation with the Examiner can save a great deal of time. In addition to clarifying any confusion or misunderstandings, your patent attorney can also discuss how proposed amendments cover features not shown in the cited prior art. By talking to the examiner before filing a written response to a rejection, your patent attorney can prepare more effective claim amendments and arguments.
How to get a utility patent granted sooner with broader claims
In an ideal world, the Examiner will allow your utility application with the broadest claims you believe are patentable over the prior art. Not only do we live in less than an ideal world, but the USPTO may make you feel like worst case scenarios are the norm. So if and when you do get an indication that some claims are allowable, I generally recommend taking the allowable subject matter to get the patent granted.
Instead of arguing for broader claims in the pending (parent) application, you can file a child application to pursue broader claims. That way, the grant of your patent application will not be held up.
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