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Patenting Technology is Not a "One-Size-Fits-All" Proposition.

Most patents are used for offensive purposes. The patent holder has a product on the market with a special feature that consumers desire. This feature generates a piece of the market that competitors want to replicate. If the special feature is protected by a patent, the patent holder can enforce its patent against the competitor and protect its market share. By doing so, the patent holder protects the increased profits that come with being the only one able to operate in the “special feature” segment of the market. The sooner the offensive patent can be obtained, the sooner it can be used to protect profits. Speed of prosecution is the key for the patent holder with defined products and paths to market.

Many patents however are not used for offensive purposes. Research and development companies, for example, do not typically know the precise form of their end product, let alone have a definitive path to market. They do not use their patents offensively at first, but merely as a way to protect their new innovation generally with a hope that one day the innovation will become commercialized. Perhaps having an application on file, adds to a patent portfolio which helps attract outside investment dollars. Perhaps having an application on file lets government funders know who is active in a particular technology area when deciding to whom it should award grants. Perhaps there is a licensing advantage for having an active patent application, regardless of whether the patent issues. R&D companies may want to take a much slower path to issuance or final rejection.

The point is that patent prosecution is not a one-size-fits-all proposition. There are ways to speed up both foreign and domestic patent prosecution. These may include petitions to make special or to accelerate prosecution of under other patent office programs such as the patent prosecution highway. Deciding on which foreign patent office to conduct the search of a PCT application can also speed up the patenting process. There are also many ways to slow the process down. These include filing a provisional application, even if the application is complete enough to file as a utility application. Filing a set of claims that include systems, apparatuses, methods or use, and/or methods of manufacture may prompt a restriction requirement that could also slow down the patent prosecution process. Filing a PCT application also slows the process because in most cases, nationalization can be delayed 30 or 31 months. And certain countries require a request for substantive examination which may occur months or years after the filing of the national phase application, depending upon the country. It’s important to remember that there’s an ethical obligation not to “cause unnecessary delay or needless increase in the cost of prosecution before the Office,” (see 37 C.F.R. section 10.18(b)(2)(i)), but there are perfectly ethical ways to avoid rushing through the patent prosecution process.

So which options should you choose to affect the speed at which your patent application proceeds through a particular patent office? There are no absolutes, but one important question to ask yourself is, “how long until the technology I’m trying to patent gets commercialized?” If the technology will be employed in a defined product with an established path to market, commercialization will be fast, and so should the prosecution of patent applications covering that product. If the technology is in its infancy, and there is a small or no market for any future product that may employ that technology, then commercialization will obviously be slow, and the patent seeker may benefit from prosecuting the patent for that technology at a slower pace. Once you’ve determine the speed of commercialization for a particular technology, whether it be fast or slow, that should be the speed of patenting that technology. Choose your patenting options accordingly.


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