You have surely seen my article series and course about receiving a notice of intention to grant a European Patent Application within one (1) year from entering regional phase at the European Patent Office (EPO): https://ip-lawyer-tools.com/course/epo-acceleration-grant-procedure/
The same thing exists at the US Patent Office, and I have looked for a long time for a comprehensive explanation of how that works. Youtube is a treasure trove, and I have found a talk given by John Farrell (click here), a seasoned Silicon Valley patent attorney, in which he unveiled the not-so-secret pathways to expedite this arduous process.
When it comes to patents, time is of the essence. The typical timeline for patent prosecution can test the patience of even the most stoic inventors. But John Farrell sheds light on practical tips to expedite the patenting process.
1. The Fast Lane: Track One Prioritized Examination
John Farrell describes the Track One program as “patent examination on steroids,” a fast-track option for those willing to pay for speed. This program prioritizes the application for an additional fee, catapulting it to the front of the examination line. Farrell underscores its effectiveness by sharing that several applications he filed under this program were granted within nine months—a stark contrast to the standard timeline of several years. He attributes it to what he calls “pure capitalism.”
“The fastest route,” Farrell explains, “is through what’s known as Track One Prioritized Patent Examination.” It’s a premium service, like boarding an express train that bypasses the usual stops. “For an extra fee,” Farrell continues, “the patent office will take your application out of turn.”
2. The Economics of Speed: Cost-Efficiency and Added Benefits
While there is an upfront cost to enter the Track One program, Farrell assures that “the total cost…doesn’t cost that much more.” The swift back-and-forth communication via telephone, rather than written correspondence, streamlines the process, thereby reducing the overall time of examination.
This speed, however, doesn’t come at the steep price one might expect. “The total cost…doesn’t cost that much more,” Farrell points out. The efficiency of communication—often via telephone—between attorney and examiner not only speeds up the process but also curtails costs, offering a compelling reason to consider this route.
3. Valuation and Licensing: A Strategic Edge
Speeding up the patent process can significantly increase a startup’s valuation, Farrell explains. A faster grant means a stronger position in fundraising efforts and a clear-cut advantage in the competitive market. For licensing, having a granted patent clears the fog of negotiation and can potentially increase the value of the technology being licensed.
For startups, time is more than money—it’s opportunity. “Having allowed or granted patents can increase the valuation of a company,” Farrell advises. The same principle applies to inventors looking to license their technology. A granted patent simplifies negotiations, reducing ambiguities about the scope of technology being licensed.
4. Fiscal Forethought: Weighing Upfront Costs
“One caveat,” Farrell advises, “is the compression of costs into a single year.” This acceleration can strain an inventor’s resources, especially for those without sufficient financial backing. It’s a sprint that may be costly upfront, though potentially rewarding in the end.
However, this expedition is not without its financial challenges. “All of the costs of the patent get compressed into a single year,” Farrell cautions, a significant consideration for inventors without substantial funding. It’s a sprint versus a marathon, with costs to match.
On the other hand, as all of the costs of the patent get compressed into a single year, for a pre funded inventor, this could be an important consideration.
5. Priority Pass: Special Status for Eligible Inventors
Farrell highlights an often-overlooked avenue for acceleration—special status for inventors over 65 or those with health issues. “There’s no extra fee for this priority,” he reassures, emphasizing the patent office’s policy of inclusivity and support for inventors who may not have the luxury of time.
A humane aspect of the patent system, as Farrell points out, is its provision for applicants facing health challenges or those who are older. The USPTO offers a no-cost acceleration for these inventors, ensuring they have the chance to see their inventions come to fruition in a timely manner.
6. The Public Good: Technologies with Special Status
Inventions that serve the greater good—be it environmental, energy conservation, or healthcare—receive a green light for expedited examination. “You can request special examination status,” Farrell says, encouraging inventors to leverage their contributions to societal advancements for quicker patent grants.
Technologies that promise significant societal benefits—such as environmental tech or health care innovations—are eligible for expedited review. “You can request special examination status,” Farrell states, highlighting that inventions in critical areas are given precedence to ensure timely deployment for public benefit.
7. International Collaboration: The Patent Prosecution Highway
Lastly, Farrell introduces the concept of the Patent Prosecution Highway—a reciprocal agreement among various nations that accelerates patent examination if the invention has already been granted in another country. “There’s no extra fee for this program,” he notes, marking it as a savvy strategy for global inventors. Farrell draws attention to the global aspect of patenting—where an allowance in one country can pave the way for expedited examination in others through the Patent Prosecution Highway. This international partnership facilitates a more efficient patenting process across borders, without additional fees.
As I conclude from the insightful talk by John Farrell, it’s clear that while the patent process is inherently a test of patience, there are multiple avenues to reach the finish line faster. Innovators and entrepreneurs don’t have to wait in the long queue of pending patents. With strategic planning and possibly some additional investment, they can embrace these methods to hasten the grant of their patents, ensuring their inventions can enter the market with the protection they need, much sooner than the standard timeline.
In sum, John Farrell’s video reveals a roadmap of strategic decisions and opportunities that can drastically reduce the wait for US patent grants. Each method has its own set of benefits and considerations, offering inventors various avenues to tailor the patent prosecution journey to their specific needs and circumstances.
You are now ready for John Farrel’s talk:
You can watch the video here if you cannot access the Youtube video in your country: