We’re only a few weeks into the new year, and the U.S. Patent and Trademark Office (USPTO) has issued a record number of patents. On January 8, 2013, the USPTO issued 5,633 patents – the most ever issued in a single day! The USPTO is projecting to issue more than 290,000 patents in 2013, which represents a 15% increase from 2012 levels. This is happening in part because the USPTO allowance rate has increased slightly (currently at 51% compared to 44% in 2008) and in part because of an increase in the number of patent examiners on its staff.
At first glance, these numbers may seem like good news for those seeking to obtain U.S. patents. Unfortunately, a higher allowance rate does not mean faster patent issuance. The increases in the number of examiners and the rate of allowance have not been sufficient to offset the higher demands caused by increases in the overall number of patent filings and the complexity of the applications filed.
Patent pendency — the interval between the time of filing a patent application and when it either issues to patent or becomes abandoned — has increased steadily since 2000, in large part because of the increasing complexity and volume of patent applications.
In its Performance and Accountability Report of 2012, the USPTO indicates currently having a backlog of 608,283 patent applications waiting for first examination. Applicants can thus expect longer delays before their applications issue to patent.
Patent processing time is primarily gauged by two measures: i) the average first examiner’s report pendency, and ii) the average total pendency.
The average first Examiner’s Report pendency is the average length of time it takes from filing an application until an examiner’s initial determination of the patentability of an invention. It currently takes the USPTO an average of 21.9 months to issue a first Examiner’s Report for a patent application.
The average total pendency is the average length of time it takes from filing an application until a patent is issued or it is abandoned by the applicant. The average total pendency is currently 32.4 months. Examiners will issue an average of 2.5 Examiner’s Reports on an application before it is allowed. Therefore, an applicant filing with the USPTO should not be surprised if two or three Examiner’s Reports issue in connection with an application.
Patent processing time varies depending on the technology disciplines covered by the patent application. For example:
- applications relating to biotechnology and organic chemistry (USPTO Technology Center 1600) have an average wait time of 17.8 months to the first Examiner’s Report and an average total pendency of 30 months;
- applications relating to chemical and materials engineering (USPTO Technology Center 1700) have an average wait time of 21.2 months to the first Examiner’s Report and an average total pendency of 32.8 months;
- applications relating to computer architecture, software and information security (USPTO Technology Center 2100) have an average wait time of 23.5 months to the first Examiner’s Report and an average total pendency of 37.5 months;
- applications relating to communications technologies (USPTO Technology Center 2600) have an average wait time of 24.3 months to the first Examiner’s Report and an average total pendency of 37.2 months;
- applications in the field of electrical, optical systems and components have the shortest average total pendency at 29.8 months; and
- applications in the field of networks, multiplexing, cable and security have the longest average total pendency at 41.1 months.
The magnitude of these delays may not be acceptable for some applicants, including those looking to enforce their patent rights. In light of this, various programs have been put in place, such as those listed in the table below, allowing applicants to shorten these delays in some circumstances and thus expedite the examination process.
| Programs | Average number of months from filing date to allowance |
| Prioritized Examination | 6.1 |
| Accelerated Examination | 10.6 |
| Patent Prosecution Highway | 18.8 |
| Petition to make special based on inventor's age | 26.9 |
In order to be eligible for some of these programs, the applicant must pay certain fees and/or must satisfy certain criteria specified under the applicable regulations. The potential advantages associated with a faster allowance may in certain cases offset the costs associated with expediting the examination process.
While delays in patent pendency may not be acceptable for some applicants, they may be advantageous to others. In certain circumstances, these delays may allow deferring the payment of certain fees (such as issue fees and maintenance fees) as well as costs associated with pursuing patent applications (such as attorney fees for responding to Examiner’s Reports). These delays may also provide applicants with additional time to consider whether to pursue rights based upon the additional expected costs of patenting. The delay may also provide time to adjust claim scope to better capture the market value of the invention.
In 2010, the USPTO put in place its 2010-2015 Strategic Plan in which it recognizes that innovation has become an important driver of the U.S. economy. This plan is designed to strengthen the capacity of the USPTO on a specific set of goals, including the goal of reducing the average first Examiner’s Report pendency to 10 months and the average total pendency to 20 months by 2015. Only time will tell if this ambitious plan will succeed.
The USPTO provides an online graphical overview of the current PTO state of affairs in terms of patent backlog, pendency, allowance rate, etc. Although the webpage does not provide applicants with specific status information regarding their applications, it can offer a general appreciation of the magnitude of the delays to be expected when filing a patent application.
In summary, applicants seeking U.S. patent protection should not be surprised by delays in patent pendency. If these delays are unacceptable, applicants may consider the various programs offered by the USPTO to expedite examination of applications.
Andréanne Auger, Montreal
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.