Counting Days

How long does the USPTO application process take?  In the 2013 annual report, the USPTO reported that total patent pendency last year was 29.1 months (883 days).  

Since this is a textile blog, I thought it might be useful to present patent pendency for textile related patents.  Therefore, I pulled a random sample of textile related patents issued between August 20th, 2013 and January 21 2014 as a double check.  While the actual pendency turned out to be 1,127 days, that is a little misleading.  Included in the sample were two contentious patents that took over 3,500 days to prosecute.  Removing those patents from the sample reduces average pendency to 1,037.  The spread for textile patent pendency is also fairly consistent –a quarter of the applications took less than 558 days and a quarter more than 1,380 days. 

Of course, some people don’t want to wait three years for anything.  Fortunately, there are ways to speed up the process.  The two most common are prioritized examinations and petitions to make special.

The America Invents Act included a provision for prioritized examination for up to 10,000 applications annually.  Under this program, patents are expedited through final disposition.  In this program, the application remains in expedited status until: 1) a notice of allowance is issued; 2) a final action has been issued; 3) an appeal has been filed; 4) a request for continued examination has been filed; or, 5) the application has been abandoned.  To qualify the application must be a non-provisional utility or plant application.  In addition, the application must contain less than 30 total claims, less than 4 independent claims and no multiple dependent claims.  To enter the program, a request has to be filed and a fee of $4,000 must be paid.   While there is a limit of 10,000 applications for the program, this limit was not reached in FY2012 or FY2013.

The USPTO is performing well with the prioritized examination program.  The goal of the program is to complete final disposition within 12 months of the request grant date.  In FY2013, patents under this program reached final disposition in 6.1 months (186 days) from the grant date.

A second route to accelerate examinations is the petition to make special.  These petitions usually involve special circumstances unique to the specific patent and are made directly to the Director of the USPTO.  Typical special circumstances would include issues regarding access to capital contingent on the patent, manufacturability issues, or the age or health of the inventor.  A fee may or may not be payable depending on the specific situation.

In other circumstances, it is sometimes beneficial to quickly file an application to protect your priority date and then try to slow down the process.  This often happens when applicants are trying to evaluate the market feasibility of the invention. 

One way to do this is to file provisional applications, which allow inventors to delay for one year having to file a non-provisional application.  While there are disadvantages to doing this, it is an inexpensive way to buy a year.

Another way to slow down the process is to file an application through the PCT (Patent Cooperation Treaty).  The PCT is a process managed by the World Intellectual Property Organization that allows inventors to apply for patents in multiple countries using a single application.  While for a US patent this can be is a more expensive option,   it can be used to delay the patent pendency by up to 30 months, though for textile related patents the achievable delay is probably closer to 24 months.  

To be fair:  the above analysis puts the PCT applications process in an undeserved bad light.  There are a lot of advantages to filing through the PCT mechanism.  Delayed pendency is not the primary use or benefit of the process and is by no means a necessary outcome of using the process.  It is simply a tool available to inventors when they need additional time.

Below is a summary of selected patents that have been recently issued in textile related classification codes:

 Composite Shoe Upper and Method of Making Same:  A substrate material, a mesh material layer and one or more skin material layers form a bonded mesh composite. The mesh composite is made by arranging the substrate, mesh and skin layer material and hot melt bonding the material followed by two hot presses to form the shape.  Patent #:  8578535.  Inventors:  Dojan, et al.  Assignee:  Nike, Inc.

Device and Method for Producing a UD Layer:  This appears to be a sister patent to Patent #: 8567024.  A device and method for producing a unidirectional (UD) layer from a predetermined number of filament strands. Device includes a dispenser arrangement structured and arranged for delivering the predetermined number of filament strands, and a storage arrangement, structured and arranged for temporary storage of the predetermined number of filament strands. The storage arrangement includes separate storage parts for each of the predetermined number of filament strands. Device also includes a spreading arrangement and an outlet.   Patent #:  8578575.  Inventors:  Seifert, et al.  Karl Mayer Malimo Textilmaschinenfabrik GmbH

Jim Carson is a principal of RB Consulting, Inc. and a registered patent agent.  He has over 30 years of experience across multiple industries including the biotechnology, textile, computer, telecommunications, and energy sectors.  RB Consulting, Inc. specializes in providing management, prototyping, and regulatory services to small and start-up businesses.  He can be reached via email at James.Carson.Jr@gmail.com or by phone at (803) 792-2183.