Category Archives: Patents

How long does U.S. patent and trademark prosecution take? (2022 edition)

Posted on December 30, 2022 | Leave a comment

Each year, IP Spotlight updates our readers who often ask: how long does it take for a patent or trademark registration to grant?  In previous years, we’ve done that by reviewing the USPTO’s annual Performance and Accountability Report. In 2022 the USPTO discontinued that report. Instead, the USPTO now publishes up-to-date pendency information on its Data Visualization Center. The Data Visualization Center includes several dashboards with detailed information about allowance rates, average pendency, and other statistics about patent and trademark proceedings.

Patents: In 2022, the USPTO’s average time to first action remained steady at 16.9 months. The average total pendency — that is, the time from filing to either grant or abandonment — was 25.7 months, an increase of 2.4 months compared to 2021 data.

The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) inventions had an average wait time of 19.1 months to first action, and an average total pendency of 27.6 months;
  • chemical and materials engineering (USPTO Technology Center 1700) inventions had an average wait time of 18.4 months to first action, and an average total pendency of 29.2 months;
  • computer architecture, software and information security (USPTO Technology Center 2100) inventions had an average wait time of 16.2 months to first action, and an average total pendency of 27.2 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) inventions generally waited 15.0 months to first action, and had an average total pendency of 24.6 months;
  • communications technologies (USPTO Technology Center 2600) inventions once again had the shortest average wait times — 14.1 months to first action, and an average total pendency of 23.5 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2800) inventions experienced an average wait time of 16.0 months to first action, and an average total pendency of 25.5 months;
  • e-commerce, transportation, construction, and agriculture technologies (USPTO Technology Center 3600) inventions had an average wait time of 17.6 months to first action, and an average total pendency of 27.5 months; and
  • mechanical engineering and manufacturing technologies (USPTO Technology Center 3700) inventions encountered an average wait time of 18.8 months to first action, and an average total pendency of 28.0 months.

The average time from the day that an applicant filed an amendment to the date of the next USPTO action was 58 days.

The allowance rate for all utility, plant, and reissue applications that the USPTO disposed of in the past year was 59%.

The USPTO offers a “Track One” examination program in which the USPTO will advance a new patent application to the front of the queue if the applicant pays an additional fee. (The fee is $4000 for a large entity, or $2000 for a small entity.) Track One examination ensures a final disposition within 12 months. In practice, the process is typically faster. In 2022, the average time from Track One petition grant to first action was 1.8 monhts, and the average time from petition grant to final disposition was 4.5 months. While the Track One program ensures speed, it does not ensure allowance; the allowance rate for Track One applications was 57% in 2022.

The summary above uses USPTO patents dashboard information through November 30, 2022:

Trademarks: The average time from filing to first Office Action in a trademark application continued to increase in 2022. The typical wait time is now 8.3 months to first action. This represents a two-month increase compared to 2021 data and five-month increase compared to 2020 data. Average total pendency is 13.8 months for applications that are not opposed or suspended during prosecution.

For the first time in 3 years, total number trademark filings decreased in 2022. (The percent decrease was 16.5%.) This should help reduce trademark application wait times in the upcoming year.

The summary above uses USPTO trademarks dashboard information for Q4 2022.

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Preparing for the European Unitary Patent System

Posted on June 13, 2022 | Leave a comment

The European Unitary Patent system is expected to (finally) take effect in late 2022 or early 2023. The system will include two elements: (1) a Unitary Patent Right (UPR), which is a single registration that will apply in multiple countries with no separate validation requirement; and (2) the Unified Patent Court (UPC), in which a patent holder may enforce a patent in multiple European countries in a single proceeding.

My partner Kari Barnes and I recently wrote an article describing what clients need to know to prepare for the European Unitary Patent system. For full details and our client alert on the topic, see the article that is available at this link.

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Russia decrees patent owners from the U.S. and other “unfriendly countries” not entitled to compensation for compulsory licenses

Posted on March 10, 2022 | Leave a comment

The Russian government has issued a decree that has the potential to render Russian patents worthless for many applicants from outside of Russia.

The decree, issued March 5, 2022, states that for Russian patents owned by entities from the U.S., the European Union, and other “unfriendly countries”, the patent holder will be entitled to “0%” compensation in situations where the Russian government compels the patent holder to license the patent. While the Russian government has used compulsory licensing only on rare occastions to date, there is no assurance that this will be the case in the future.

In addition, a law passed in Russia on March 8, 2022 gives the Russian government authority to suspend all IP rights during the year 2022 for specifically listed goods. As of the date of this writing, it is not clear whether the Russian government has named any goods to such a list.

Finally, Russia’s Ministry of Economic Development is reported to be considering lifting restrictions on unauthorized use of non-Russian-owned copyrights and trademarks for certain goods, such as software.

The list of 48 “unfriendly countries” includes Albania, Andorra, Anguilla, Australia, British Virgin Islands, Canada, European Union member states, Gibraltar, Great Britain, Iceland, Japan, Liechtenstein, Micronesia, Monaco, Montenegro, New Zealand, North Macedonia, Norway, San Marino, Singapore, South Korea, Switzerland, Taiwan, Ukraine, and the United States.

[NOTE: This post has been updated to correct the description of Russian decree No. 299.]

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How long does a U.S. patent or trademark application take to grant? (2020 edition)

Posted on December 31, 2020 | 4 comments

The USPTO recently released its FY2020 Performance and Accountability Report, with contains helpful information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question:

Patents: In 2020 the USPTO’s eight-year trend of reducing patent application pendency continued to trend downward. The average time from filing to first action was 14.7 months. The average total pendency — that is, the time from filing to either grant or abandonment — was 23.3 months. Both of these numbers were slightly below last year’s averages. The numbers also exceeded the USPTO’s goals.

The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 13.3 months to first action, and an average total pendency of 22.6 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 16.8 months to first action, and an average total pendency of 26.9 months;
  • computer architecture, software and information security (USPTO Technology Center 2100) had an average wait time of 16.0 months to first action, and an average total pendency of 26.5 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 12.9 months to first action, and have an average total pendency of 23.1 months;
  • communications technologies (USPTO Technology Center 2600) had the shortest average wait times — 11.4 months to first action, and an average total pendency of 29.2 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 13.1 months to first action, and an average total pendency of 21.1 months;
  • transportation, construction, agriculture and e-commerce technologies (USPTO Technology Center 3600) had an average wait time of 16.7 months to first action, and an average total pendency of 26.4 months; and
  • mechanical engineering and manufacturing technologies (USPTO Technology Center 3700) had an average wait time of 17.7 months to first action, and an average total pendency of 28.0 months.

The total number of nonprovisional patent applications filed dropped by about 2%, to 653,311 in 2020. However, the number of provisional patent applications increased by about 3% to an all-time high of 174,464.

399,055 patents issued in FY 2020, also an all-time high of 665,231.  The allowance rate increased to 61.7%.

Trademarks: In FY 2020 the average time from filing to first Office Action in a trademark application was 3 months. Average total pendency was 9.5 months for applications that were not opposed or suspended during prosecution.

Notably, despite the year’s pandemic, during which many brand holders consolidated or dropped brands, the total number of trademark applications filed increased by nearly 10% to 738,112.  The number of active certificates of trademark registration increased by 5.7% to over 2.6 million.

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Large entity, small entity or micro-entity: which type of patent applicant are you?

Posted on July 2, 2020 | 1 comment

When applying for a patent application, certain entities are entitled to reduced USPTO filing fees. Applicants who qualify for small entity status can reduce many USPTO fees by 50%. Applicants who are micro entities can reduce certain fees by 75%. An applicant who is neither a small entity nor a micro-entity is considered to be a large entity and must pay standard fees.

The savings resulting from small entity or micro entity status can be substantial.  As of June 25, 2021 the standard combined application, search and examination fee for a new utility patent application was $1,820. However, a small entity only pays $910, and the equivalent micro entity fee is $455. Also, in order to maintain a patent in effect, the owner must pay maintenance fees at the 3.5, 7.5, and 11.5-year anniversaries of the patent’s issuance. These costs can become significant over time. Small entity or micro entity status can help reduce those costs.

However, the consequences of mis-declaring entity status can be severe. In cases where courts have found applicants paid the small entity fee without a good faith basis for considering themselves to be small entities, the courts have Continue reading →

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IP and the Open Covid Pledge

Posted on June 30, 2020 | Leave a comment

Are you developing new technologies, treatments or other inventions that are useful to combat the COVID-19 epidemic? If so, my colleagues Gunjan Agarwal and Chipo Jolibois recently wrote a useful article discussing the Open COVID Pledge and how it can be used when patenting COVID-19-related inventions.

For the full article on Law360, click here.

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Use caution before taking advantage of extended IP filing deadlines under CARES Act

Posted on April 1, 2020 | Leave a comment

(Note: This post was updated June 30, 2020 to reflect the new extension dates that the USPTO published on that date.)

The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19.

Patent and trademark filing extensions

Extensions available through June 30, 2020

On March 31, 2020, and updated on April 28, 2020, the USPTO issued notices indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicated that certain deadlines that arise between March 27, 2020 and June 1, 2020 were extended to June 1, 2020 if the applicant or patent/trademark registrant could certify that the delay in filing was because the applicant, inventor, patent or trademark registrant, petitioner, or attorney or agent was “personally affected” by the COVID-19 outbreak.  The USPTO subsequently revised this extension period for patents to June 30, 2020 for small and micro entities only.

The patent-related deadlines that were permitted to be extended include due dates for Office Action responses, maintenance fee payments, issue fees, appeal filings, and certain Patent Trial and Appeals Board filings. The trademark-related deadlines that may be extended include deadlines for Office Action responses, statements of use and affidavits of use, renewal applications, and notices of opposition.

Patent filing extensions available through July 31, 2020

On June 12, the USPTO published an additional notice indicating that it will extend the time for claiming priority to a provisional patent application in certain situations. The typical rules are that an applicant who files a utility patent application has 12 months to claim priority to a provisional patent application, and that the applicant can petition for a two-month grace period if the applicant unintentionally missed the 12-month deadline. The new notice states that if an applicant missed a 12-month deadline that ended between March 27, 2020 and July 30, 2020 and the reason for the delay was that the applicant was “personally affected” by the COVID-19 outbreak, the USPTO will extend the two month period until July 31, 2020 or the end of the two-month period, whichever is later. The USPTO also provides some relief for missed international filing deadlines, but that relief is limited to a waiver of the petition fee. (The two-month grace period is not extended for international applications.)

Ongoing flexibility for trademarks

Although the official extension period for trademark filings expired on May 31, 2020, the USPTO stated that “[i]the interest of maintaining flexibility and options for our stakeholders, the USPTO will continue to waive the petition fee for petitions to revive applications or reinstate registrations that became abandoned or expired/cancelled as a result of the COVID-19 outbreak, with a statement that the delay in filing or payment was due to the COVID-19 outbreak.”

Patent Fee Extensions

Finally, on June 29, 2020, the USPTO further extended fee payment deadlines for small and micro entities only. Specifically, small and micro entities who can make the required certification can defer until September 30, 2020 payment of filing fees, issue fees, maintenance fees and certain other fees due after March 27, 2020.

The USPTO has created a form that applicants should use when requesting any extension of time due to the COVID-19 outbreak. The form is available at this link.

Copyright extensions

The U.S. Copyright Office has extended certain registration timing requirements that typically must be followed in order to seek statutory damages in an infringement claim. In general, a copyright owner is eligible for statutory damages in an infringement action only if the work is registered prior to the infringement or within three months of the work’s first publication. The Copyright Office is extending the three-month window for certain works having a window close date that is between March 13, 2020 and the date that the Acting Register of Copyrights announces an end of the disruption period. However, this extension is only available if the applicant submits evidence that the applicant was “unable to submit a physical deposit of the work and would have done so but for the national emergency.” The extension is not available for works that can be submitted entirely in electronic form.

The Copyright Office also expanded the types of documents that it will accept electronically to include notices of termination for recordation, requests for reconsideration of refusals to register, and requests for removal of personally identifiable information from the public record. For applications filed after April 2, 2020 that require physical deposit material, the Copyright Office is also accepting electronic copies so long as the applicant also mails a physical copy later.

Cautions before taking advantage of extended deadlines

Patent and trademark applicants and registrants should exercise caution before relying on the USPTO’s extended deadlines under the CARES Act. First and foremost, patent application filing deadlines are not changed. The extended deadlines for patents only apply to granted patents and already-filed applications.

Also, certain of the patent deadline extensions are only available to small entities and micro entities. Notably, only small entities and micro entities may extend maintenance fee payments.

Also, to qualify for any of the USPTO’s extended deadlines the late filing must be accompanied by a statement that the applicant, patent or trademark owner, inventor, attorney or agent, or petitioner was “personally affected” by the COVID-19 outbreak. This means that “the outbreak materially interfered with timely filing or payment.” Patent and trademark applicants, owners and their representatives who contracted COVID-19, or applicants (such as healthcare providers) whose businesses are focused on COVID-19 response can likely state that the outbreak materially interfered with the filing. Patent and trademark applicants, owners and representatives with an affected family member likely also can make the statement. It’s likely that applicants, owners, and representatives who are subject to “stay at home” government mandates and who are caring for family members and/or home-schooling young children could also do so. Further, applicants that are businesses with cash flow concerns due to business distruption should be able to make this statement, especially if the deadline involves payment of a fee.

However, someone who simply chooses to delay may not be able to truthfully say that the outbreak “materially interfered” with timely filing or payment. Thus, patent and trademark applicants, owners, and their representatives should carefully consider whether they qualify for the extended deadlines before relying on them.

Copyright applicants should consider whether they can provide evidence that they were “unable” to file the application within the normal three-month window. If the work is of a type that can be electronically deposited, the applicant must do so within the unextended time period unless the applicant provides evidence that it could not do so, for example by certifying that the applicant had no access to a computer and/or the Internet. If the work is of a type that cannot be electronically deposted, the applicant must certify that it was subject to a government stay-at-home order, or that it was unable to access physical materials due to business closure.

Special thanks to my Fox Rothschild colleagues Flynn Barrison, Dianna El Hioum, and Brienne Terril for their contributions to this post. A version of this article also appears on the Fox Rothschild Coronavirus Resource Center.

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CARES Act authorizes USPTO to extend certain patent and trademark deadlines

Posted on March 28, 2020 | Leave a comment

NOTE:  A more recent post with specific details about extended deadlines is available at this link.

The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19.

In the United States, many filing deadlines are set by statute. Because of that, as of the date of this writing, the United States Patent and Trademark Office (USPTO) has not yet extended patent or trademark deadlines, as it did not have authority to do so. Section 12004 of the CARES Act gives the USPTO Director to toll, waive or modify statutory deadlines under the Patent Act, the Trademark Act, and the Leahy-Smith America Invents Act.

The USPTO is now permitted to extend deadlines that fall between March 13, 2020 and May 12, 2020.

The Act also gives similar authority to the Register of Copyrights to extend copyright filing deadlines.

Note that no deadlines are actually extended yet. We expect the USPTO and Copyright Office to act on this quickly. IP Spotlight will post details of any specific deadline extensions when available.

 

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Will the Defense Production Act shield COVID-19 protective equipment makers from patent infringement risk?

Posted on March 23, 2020 | Leave a comment

On March 18, 2020, President Trump issued an Executive Order under authority of the Defense Production Act of 1950. The Executive Order stated: “I find that health and medical resources needed to respond to the spread of COVID-19, including personal protective equipment and ventilators, meet the criteria specified in section 101(b) of the Act (50 U.S.C. § 4511(b)). Under the delegation of authority provided in this order, the Secretary of Health and Human Services may identify additional specific health and medical resources that meet the criteria of section 101(b).”

This development has some manufacturers asking: Can we supply hospitals with personal protective equipment and ventilators in this time of COVID-19 response without risk of patent infringement?

In a post on the Fox Rothschild Coronavirus Response Resource Center, my partner Jeff Schwartz and I address this question. The short answer is, in most cases, no. However, there are actions that manufacturers can take to mitigate their risk, including:

  • Seek a license from the patent holder. This could be done anonomously with help from counsel, from public officials or from others who have influence in the community who can help negotiate reasonable terms, and to avoid identifying the manufactuer to the patent holder in the initial call.
  • Consider ways to design around the patent.
  • Avoid creating emails and other communications that discuss the potential patent risk. Those documents could later be used against the company as evidence in patent infringement litigation.

For more details and the full article, click here.

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IAM Global Leaders 2020

Posted on January 24, 2020 | Leave a comment

I am honored to be named to the inaugural IAM Global Leaders list, a new publication featuring interviews with patent pratitioners ranked in the gold tier of the IAM Patent 1000.

In my interview with IAM, I discuss how our team at Fox Rothschild is working to anticipate client expectations and lead the way in managing patent projects to meet or beat those expectations. I also discuss key questions that clients should consider when building an intellectual property strategy.

The full interview is available via this link or this link.

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