One of the most common complaints that companies have about the patenting process is that it is too slow, especially for software patents. Fortunately, there are some infrequently used methods for obtaining software patents much more quickly than the norm, and we at Blueshift IP are familiar with all of these ways and with choosing the right strategy for our clients to maximize the speed at which they obtain patents, without sacrificing protection.
Using these techniques, we have obtained software patents for our clients in less than one year, which is significantly faster than the 3-5 years that is common when just using the default filing methods. This is the second part of a three part series on How To Obtain Software Patents More Quickly.
In this part we’ll cover a very effective method for speeding up the patent examination process that we have used very often at Blueshift IP and that also is not very well known to clients or patent attorneys. There are a few variations on this process that I’ve used very successfully going back many years. I’ve given presentations on this to other patent attorneys and educated them about it and many people aren’t aware how it works, how it can speed up the examination process to obtain patents more quickly and to reduce costs significantly, particularly in the case of patents that are being obtained in multiple countries as part of an international patent protection strategy.
The name of this process is a bit obtuse, as in the case of many things in the law. It’s called “The Patent Prosecution Highway,” which is a name I believe lawyers and lawmakers came up with in an attempt to associate speed in the form of a highway with the process of patent examination, which is also called “patent prosecution.” The name “Patent Prosecution Highway,” or “PPH,” is a name only a lawyer could love.
The way in which the PPH, however, enables your patent applications to be examined more quickly is very easy to understand. If one of your patent applications is allowed in one country, then under the PPH you can use that allowance to speed up the examination of the same patent application in other countries. That’s the basic idea. Of course, the devil is in the details, and knowing how to navigate all of the ins and outs of the PPH requires expertise, not only because the PPH has special requirements, but also because the requirements of the PPH vary from country to country, and because the interactions between the requirements of different countries can become complicated. That is why we recommend that you retain a law firm, such as Blueshift IP, that has extensive experience using the PPH to handle your patent applications under the PPH for you.
Furthermore, and I don’t think many people know this fact, but when the examination of a patent application is sped up under the PPH in the U.S. Patent and Trademark Office (USPTO), the likelihood that the patent application will be granted also increases. Although that is not the stated purpose of the PPH program, it is a fact that applications that are examined under the PPH have a higher allowance rate than other patent applications.
There is one particular strategy that I’ve used many times with success for my clients, which I call “The Patent Prosecution Highway Boomerang.” It involves filing a patent application in the US, then filing a international (PCT) application for the same invention. If the examiner in the PCT application concludes that the PCT application is allowable, then we can use that allowance (technically a decision of patentability in an International Search Report and Written Opinion) to speed up examination back in the US. I call this the “Boomerang” because you file your patent application first in the US, then file a PCT application, and then use the favorable decision in the PCT application to come back into the US and speed up examination there.
If you then obtain an allowance in the US, you can then use that allowance to speed up the process in countries that have a PPH agreement with the US.
Another benefit to the PPH, at least in the US, is that there’s no USPTO fee for the program, unlike the Track 1 that I mentioned in Part 1 of this series. The PPH is very enticing to use for this reason as well and we have used this program for our clients very frequently to speed up the process both in the US and in many other countries.
Although those benefits of faster examination may be obvious, there are some hidden advantages as well. The benefit that occurs for most applications is that if the end result is that your patent application is allowed you end up with an granted patent in your hand much faster than you would otherwise. This has all of the obvious benefits of being able to enforce your patent rights against competitors sooner, which is particularly important in the case of software patents, because of the rapid rate of innovation in software relative to the slow pace of normal examination. Faster patent allowance also means that you have a valuable asset on your balance sheet in the form of a granted patent much sooner than you would otherwise. It means that if you’re considering seeking protection for the same invention in other countries, you will have much more information from the US examination process about what kinds of rejections and prior art you are likely to face in other countries. This knowledge can help you both increase your chances of obtaining the same patent in other countries and also speed up and significantly reduce the cost of obtaining that patent in other countries. You’ll have the marketing value of having an issued patent sooner rather than later and in my experience, the faster examination process of the PPH also reduces the time and effort that we as patent attorneys and our clients have to put into obtaining the patent because with only a few months between filing the patent application and getting the results of the first round of examination and then only another few months until the next round of examinations, the patent applications remains much fresher in our minds, in between communications with the examiner so that we don’t have to spend as much time refreshing our memory about the application in comparison to the normal examination process.
At Blueshift IP we frequently use the PPH program to significantly increase the speed of patent examination and to obtain patents for our clients more quickly. We are always looking out for ways to speed things up for our clients so they are able to get more protection sooner and reduce their costs. Contact us at Blueshift IP to find out how we can help you to obtain software patents more quickly. And stay tuned for our next installment of How to Obtain Software Patents More Quickly.