One of the most common client questions facing patent attorneys today is: How long will it take to get a patent? While no definitive answer exists, statistics from the United States Patent and Trademark Office (USPTO) reflect a trend toward shorter patent application pendencies between application filing and patent issuance. At Taft, we look for ways to reduce the time it takes to obtain a patent, including examiner interviews and pendency reduction measures.

At present, the average pendency for a utility patent application is thirty-six months before disposal. Disposal refers to either the application issuing as a patent or the applicant abandoning the application. However, if the applicant contests a rejection by a patent examiner by appealing to the Board of Patent Appeals and Interferences, the average pendency jumps to seventy-six months. Many patentable technologies are obsolete in seventy-six months. We work to try to obtain allowance without an appeal and evaluate the cost effectiveness of continuing an application with broader claims after the allowance.

Not surprisingly, one of the primary factors influencing how long a patent application is pending is the number of patent examiners available to examine patent applications. To address this issue, the USPTO continues to hire patent examiners. In just the last month, the USPTO hired almost one hundred new examiners. These hires comport with the USPTO’s goal to hire over 2,000 new examiners by the end of 2012.

Adding patent examiners in recent years has decreased pendency. For some perspective, in 1989, 41.5% of all pending patent applications at the USPTO were awaiting substantive review. In other words, 58.5% of all pending patent applications in 1989 were being substantively reviewed at any given time. But in 2004, the percentage of pending patent applications being substantively reviewed dropped to 31.1%. Current statistics indicate that about 40% of all pending patent applications are under review at any given time and this percentage is increasing. Regardless of the steps taken by the USPTO to reduce pendency and examiner interviews, patent applicants have pendency reduction mechanisms available to them to hasten substantive review of certain patent applications.

An applicant may petition to have his/her patent application made “special.” By making a patent application “special,” the pendency is significantly decreased. Petitions to make special, with two exceptions, include a number of requirements:

  1. The petition to make special must be filed at the same time as the patent application.
  2. The patent applicant must provide a statement that a preexamination prior art search was conducted.
  3. A support document identifying all of the limitations in the claims that are disclosed by each prior art reference and specifying where the limitation is disclosed in the reference.
  4. A detailed explanation of how each of the claims is patentable over the prior art references cited with particularity.

Alternatively, a patent applicant may petition for special status by: (A) stating the health of the applicant is such that he/she might not be available to assist in the prosecution of the patent application if it were to run its normal course; or (b) submitting evidence showing that at least one patent applicant is 65 years of age or older.