What is the average wait time for an examiner to begin review your utility patent application?

Experienced utility patent filers know something that might be a shock to first time applicants. The utility patent wait time for a first review of your application can be unbearably long. Known as “first Office Action pendency,” just how long is this wait time? As of August 2021, the wait time for a first Office Action is 16.8 months.

How can you shorten the utility patent wait time for the first Office Action?

There are a few ways to speed up your utility patent application, but only certain options will advance your utility patent application to the front of line. In order of increasing costs, here are options to cut in front of the line:

  1. If an inventor is at least 65 years old, file a petition based on inventor age – no USPTO fees;
  2. Track One prioritized examination – high USPTO fees; or
  3. Accelerated Examination – potentially high attorney’s fees.

Other options do not advance a utility patent application out of turn, but can shorten the process thereafter. For example, PPH does not shorten the wait time for the first Office Action. Instead, PPH shortens not the initial wait time, but the timeframe after the initial review if it is favorably received by the examiner.

How can you use the long wait time to form a smart patent budget?

Everyone knows utility patents are expensive, but the total costs do not occur all at once. Expect a large price tag for the initial filing, followed by little to no activity for over one year. That 16-24 month wait time for the first review can be used to replenish your patent budget. You can use that time to secure new investors who were willing to invest only after your nonprovisional patent application was filed.

Can the uncertainty and long wait time of a utility patent application work in your favor?

There may be benefits to a longer patent-pending status. If you have any related patent applications, either in the US or in foreign countries, a longer wait time allows you to see the outcomes of related cases before receiving a first Office Action. That advanced knowledge may enable you to amend claims in your pending nonprovisional before the examiner begins examination. The result is a stronger version of claims that might contain more allowable subject matter and possibly avoid a subsequent Office Action.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com