Value Enhancing Patent Strategies: Accelerated US and Foreign Patent Timelines

My many years of experience as an IP Strategist working with countless clients helps me hone keenly my effort to assist clients in utilizing various patent strategies available to them, including how to buck the trend of long patent pendency that can create business uncertainties. In this regard, you probably know the traditional patent acquisition timeline is typically 2.5-4 (or even more) years from US utility application filing to issuance. For clients seeking protection outside the US, the time can be twice as long. 

Value Enhancing Patent Prosecution Strategies: Non-Publication of US Applications

The time for obtaining US and non-US applications can be greatly reduced through use of acceleration techniques made available in recent years. I have obtained dozens of US utility applications for clients using the “Trackone” process. Using this mechanism, these clients have obtained notice of issuance within 1 year. Moreover, I often find the examinations using this process to be more thorough, which often results in a “cleaner” review by the examiner, with fewer arguments being required to demonstrate the that claims are allowable. This shortened US allowance can be leveraged to streamline the issuance of non-US applications using the Patent Prosecution Highway (PPH) procedure. In short, a non-US application that includes the same claims as an issued US application, can be fast tracked through by selecting the PPH option in those countries in which it is allowed.  

Unfortunately, I find these acceleration processes to not be in the “tool-boxes” of many patent attorneys. This means that clients are not offered to clients that may generate business benefit from quicker patent issuance in the US or in other jurisdictions. Certainly, for clients that file many patent applications, the added cost may be prohibitive. Also, for clients where patents are a “nice to have,” the time and uncertainties associated with the standard patent acquisition model will likely not affect their ability to meet business goals. For companies where patents are a “must have” aspect of their business strategies, I find that the minimal extra cost required for accelerating patent examination and issuance timelines is far outweighed by the value of the certainty of having patents that can included in a business valuation. To this end, these days most of clients—who are almost exclusively innovators seeking exit in a short period—will elect to accelerate their patents in the US and elsewhere.   

For more information, read:

Value-Enhancing Patent Prosecution Strategies that You Should be Considering

 Value-Enhancing Patent Prosecution Strategies that You Should be Considering (Part 2 of 3)

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