Fast track or slow lane: Patent strategy or IP cost control?

The patent application procedure is notoriously slow and driven by fixed deadlines. We are often asked how to speed up the process and also how to slow down the procedure when big costs approach such as validation of a granted European patent.

The issue becomes even more pressing when you have patent applications running simultaneously in Europe and the United States. Your patent attorney can help you align the patent application procedure with your commercial milestones.

Why slow down?

You might ask why one would want to slow down the procedure as it already typically takes several years for a patent to be granted. However, keeping an application pending can give a commercial advantage in that it creates uncertainty for competitors who cannot be sure what scope of monopoly might be granted to you. Your options are kept open, for example, to amend the claims later or to file a divisional application for subject matter that can be separated from the main invention. Bear in mind, though, that the European Patent Office charges annual renewal fees on pending patent applications, the cost of which should be factored into your approach. Slowing the process can be achieved by using the maximum time permitted to respond to the examiner’s objections, requesting extensions of time where possible and, at the EPO using the “further processing” procedure whereby an additional 2-3 months of time can be gained for a fee of EUR265.

Speeding up process

Speeding up the patent application procedure can be useful to get an earlier indication of patentability that can be used for early stage investment rounds. For technology that is likely to be contentious, you may wish to get through the EPO’s opposition period (whereby anyone can oppose the grant of a European patent within nine months of its grant) as quickly as possible before the product is launched. The UK’s Patent Box tax regime requires a granted patent for you to participate.

European patent applications can be accelerated using the PACE procedure whereby a simple form (with no fee) is filed. No reason needs to be given for wanting accelerated handling. A PACE request can be filed once in each of the search and examination phases and the EPO undertakes to provide the next communication within 6 or 3 months respectively. You have to keep your side of the bargain though – if you subsequently request an extension, or pay renewal fees late, your PACE request will be cancelled.

Acceleration program examples

• The UK Intellectual Property Office has a Green Channel for accelerated handling of patent applications where the applicant can explain why the technology is environmentally friendly. This can be invoked by a written request and it is possible to view other applications in the Green Channel (and the reasons given by their applicants) on the UKIPO website.
• The United States Patent and Trade Mark Office (USPTO) has a Track One Program where applications can be accelerated for a fee of $4000 ($2000 for a small entity). This can result in an examination report in only a couple of months and potentially the grant of the US patent in substantially less than a year from filing.
• There are other acceleration programs at the USPTO with no fee including acceleration for age or health (e.g. where one inventor is of age 65 or over) and Patents4Patients for inventions relating to cancer immunotherapy in Phase II or Phase III (FDA) trial.

The Patent Prosecution Highway program

The Patent Prosecution Highway program is available at all of the UKIPO, EPO and USPTO. This is a program whereby, if you have patent claims allowed in one jurisdiction, that work product can be used to accelerate handling of the same patent claims in another jurisdiction. There are some limitations as to which countries participate and, potentially, it may be undesirable to limit your patent claims in one jurisdiction to claims granted in another which has different patentability requirements. Either way, your patent attorney will be able to advise on your particular case.

Summary

In all cases, it can be very helpful for your patent attorney to make use of informal interviews with the patent examiner to make progress with the patent application and test out potential claim amendments before making a formal submission.

Keep your patent attorney informed of your key business milestones, especially if the situation changes and we can speed up or slow down the application process to best align with your needs.

This article was prepared by HGF Partner Vanessa Stainthorpe and Dr Prashant Girinitah and Dr Lou Lieto from Wilson Sonsini Goodrich & Rosati.  If you would like further advice on this or any other matter, please contact Vanessa.  Alternatively, you can contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.