Time to Move into the Fast Lane

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20 March 2015

We are moving into an era where technology is developing and changing so rapidly such that there is a concurrent commercial need to obtain expedited grant of patent applications so as to enable innovators to obtain granted patents more quickly and more efficiently.

Furthermore, as the catastrophic effects of global climate change are likely to be the next great challenge in the 21st century, we have seen an increase in the number of patent applications being filed relating to the fields of inter alia energy conservation, the development of alternative and renewable energy sources and greenhouse gas emission reduction. Time is ticking for innovators and world leaders to find tangible solutions to these environmental problems and thus the increasing need for patent holders to obtain expedited grant of patent applications in these fields.

Numerous national Intellectual Property Offices offer various types of fast-tracking programs and a summary overview of a few of these fast-tracking programs is given below.

Certain Intellectual Property Offices have established fast-tracking programs for environmentally-friendly patent applications with the purpose of promoting so-called “green” technologies. The overriding objective of these accelerated patent examination programs is to ensure that patent applications covering green technologies are examined as a matter of priority thereby reducing the time ordinarily taken to obtain a granted patent, from several years to a much shorter period reaching a few months in specific cases.

A further program that is being increasingly used to expedite grant of a patent holder’s international patent portfolio is the Patent Prosecution Highway (referred to as the “PPH”). The PPH program is available for all patent applications in all technological fields (and thus is not only applicable to green technology patent applications).

In terms of this program, where patent claims have been found to be patentable by either the European Patent Office (“EPO”), the United States Patent and Trademark Office (“USPTO”), the Japanese Patent Office (“JPO”) or one of the other participating Patent Offices, accelerated processing of the patent holder’s corresponding patent applications that are pending before said other participating Patent Office(s) may be requested. The various Patent Offices participating in this program refer to and share already existing patent search and examination results as much as possible in such cases. In this way, the program allows patent holders to fast track examination procedures of their foreign patent portfolio through these participating Patent Offices.

The USPTO offers a further program, namely Track One prioritized examination, the goal of which is to assert the grant of a patent application within 12 months from obtaining prioritization status thereof.

Whilst the above succinctly describes a few of the fast-tracking programs available and which are widely used, it is by no means an exhaustive list.

The merit of using fast-tracking procedures is evident by high tech companies, such a Google, which has, to date, secured approximately 875 fast-track patents. It is reported that Google’s attainment of this large number of fast-track patents equates to around 14 percent of the 6,187 expedited patents that have been issued by the USPTO.

As one can see, there are key advantages associated with these fast-tracking procedures.

A first primary advantage is that patent holders will be in a position to commence licensing their patent technology a lot sooner in comparison to going the normal patent examination route which, in turn, will significantly reduce the time that patented technology can be marketed and commercialised.

As for start-up companies, these enterprises can start raising private capital on the strength of their granted patent a lot sooner than would be the case under normal examination.

Of course, these fast-tracking procedures are not without certain disadvantages which one should be aware of.

A fundamental drawback associated with the fast-tracking programs available resides in the difference in each Patent Office’s requirements, rules and procedures. This places a significant burden on patent holders to adequately meet each Patent Office’s requirements and to prepare different patent claim sets suitable for each program.

A further disadvantage that should be borne in mind is the costs pertaining to requesting accelerated examination. These costs differ from program to program and with respect to each different international Patent Office.

A harmonised, global fast-tracking program would inevitably solve the above burdens placed on patent holders and would also encourage more patent holders wishing to participate in expedited patent examination programs.

However, until such time that a harmonised program comes to the fore, should you wish to find out more about capitalizing on the various existing programs for expediting patent examination and grant that are available please contact Ursula Baravalle at ursulab@dmkisch.com.