How To Obtain Software Patents Fast - Part 1

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 first part of a three part series on How To Obtain Software Patents More Quickly.

Today, I will cover a very straightforward and effective way to speed up the patent examination process significantly, which is to file a patent application using what’s called the “Track 1” or “Prioritized Examination” program in the U.S. Patent and Trademark Office (USPTO). Although the Track 1 program has been around for quite a few years now, many companies don’t know about it and many patent firms don’t use it. We have used this program frequently for the benefit of our clients to obtain software patents for them much more quickly than normal. The basics of the program are very simple: you pay an extra fee to the USPTO in exchange for significantly faster examination. That’s why it’s called Track 1. You can think of Track 1 as the fast track. To give you an idea of just how fast Track 1 examination is--using the normal track (“Track 2,” also known as the slow track), you normally have to wait two years or more for your software patent to be examined for the first time. Over 90% of the time, the results of that first examination is a rejection. Very often you receive two or three rejections, if not more, and that’s why the typical time to obtain a patent under Track 2 is 3-5 years.

In contract, in Track 1 examination, the USPTO will guarantee you up to 2 rounds of examination within 12 months of filing. I say two rounds of examination because neither your patent attorney nor the USPTO can guarantee in advance whether your patent application will be allowed after one or two rounds of examination. The only thing that can be guaranteed is that the examiner will perform the first round of examination within a few months of filing and if the application is rejected the first time, and you file a response to the rejection on time, and if the examiner then rejects the patent application again, then that second rejection will occur no later than 12 months after your initial filing date.

Sometimes, the first round of examination will be an allowance of your patent application and in some cases if your patent application is rejected in the first round, it can be allowed in the second round. This 12 month guarantee is how we have obtained software patents for our clients in under a year using Track 1. As you might expect, there are some tradeoffs involved in the Track 1 program but, in our experience, the advantages outweigh the disadvantages in many cases.

The most important limitations of the Track 1 program are:

• The additional fee that you must pay to the USPTO, which is approximately $4,000 in the case of a large entity and approximately $2,000 in the case of a small entity.
• The patent application cannot include more than 30 total claims or more than 4 independent claims.
• If the examiner issues what’s called a “restriction requirement,” because the examiner believes that your claims are directed to more than one invention, you must accept the examiner’s decision and remove all of the claims except for those that are directed to one of the inventions.
• If you receive a rejection of your patent application, you must respond to the rejection within the official 3 month deadline. If you don’t, and you obtain an extension of time to respond, you forfeit the application’s Track 1 status and the application gets put back on the slow Track 2.

In my experience, these limitations are not particularly significant for most of my clients. For example, we typically don’t file applications that have many more than 30 total claims or more than 4 independent claims.  Furthermore, when we receive a restriction requirement, we typically do not argue against it. Additionally, in most cases, we respond to rejections within the initial three month response period anyway. These “limitations” of the Track 1 program, therefore, do not result in meaningful sacrifices for our clients in most cases. As a result, other than the additional financial costs of the USPTO Track 1 fee, the Track 1 program essentially provides only benefits in the form of faster examination.

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 Track 2 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 Track 1 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 Track 2 process.

At Blueshift IP we frequently use the Track 1 examination 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.