Patent Quickie: Getting a Quick Patent Can Help

By Gene Quinn
August 4, 2009

It is no longer news that the United States Patent Office is hopelessly behind, and many inventors and the companies they work for are waiting extraordinary periods of time to even get a patent examiner to pick up their patent applications for a substantive review. This has caused many inventors to indefinitely have their dreams, hopes and aspirations put on hold. Without an issued patent it is impossible for inventors and start-up companies to obtain funding, and when licensing offers are put on the table the terms are so low and the terms so bad that inventors and start-ups simply cannot take the deals. This is not intended to be an indictment of those who offer bad licensing deals. The truth is licensing offers are always inadequately low when a patent has not issued. Everyone knows that the further down the road to obtaining a patent you are the better any licensing deals become, and with a Patent Office that does not issue patents in any technologically relevant time frame inventors, start-ups and small businesses are the victims, and good innovations are not making their way out into the market. That means society is not benefiting from innovations, and these innovations, some of which could result in new industries with new jobs and jump start the economy, remain idle.

Increasingly, it is becoming necessary to think outside the box and come up with strategies that could help innovators achieve their goals, because the Patent Office backlog and inaction in Congress means we have to help ourselves. Help is not going to be coming anytime soon, even though recent moves by senior PTO Officials are indeed encouraging. The magnitude of the problem is so great, and only so much will be able to be accomplished without Congressional assistance, and even if Congress were to try and help they would most likely get it all wrong. I am not sure any more whether that is because so many in Congress are not knowledgeable of patent law and the economy, or whether it is because they simply don’t read legislation they vote on. Whatever the reason, there are only few in Congress who seem to care, and even fewer that seem to understand the issues. Yes, we are most definitely going to have to bail ourselves and our clients out rather than wait for assistance that is likely to come only after many innovations are obsolete.

One thing that we can do to at least attempt to help is seek patents in countries where patents can actually be granted in a reasonable time frame. Having at least one patent would allow for inventions to be lawfully claimed to be patented, and if a patent is issued in one jurisdiction then that would seem to make it far more likely that a US patent will issue, at some point. Perhaps this will be enough to encourage at least some investors and venture capitalists to invest with some confidence in the newness of the invention and the likelihood of obtaining a patent.

According to Jeff Sweetman, of Inovia, a company specializing in foreign filing and entry into the national phase as a result of filing an international application:

There may be commercial advantages to obtaining one or more granted patents quickly. Granted patents can boost the value of the applicant company, which might be helpful if the business is to be sold in the foreseeable future. Of course, there may be other commercial advantages too. Whilst patents in such major countries are obviously more desirable, patents obtained quickly and at relatively low cost in smaller jurisdictions may still be helpful. One option is to file a PCT application and a simultaneous Paris Convention application in countries such as South Africa, New Zealand or Singapore.

While it might not be extremely desirable to gain exclusivity in countries such as South Africa, New Zealand or Singapore, these countries do offer fast action on patent applications. Obtaining a patent in one or more countries can prove the value of the technology, because after all if it is new enough to be patented in other countries then it should be new enough to be patented in the United States, United Kingdom, Germany, Japan and other countries with larger, more desirable markets.

With respect to each of the three countries Sweetman points to, he goes on to explain:

South Africa has the advantage of being relatively low cost and very fast to grant. A disadvantage , or maybe an advantage, depending on your perspective, is that South Africa is not a substantive examination country. All applications proceed to grant assuming the relevant fees are paid and formalities met. By applying to expedite, grant can be achieved within six months of filing.

New Zealand is more expensive than South Africa, but still quite fast. Depending on technology and intended future filing destinations, full examination in New Zealand will often provide a better idea of likely patentability in other countries, due to having a relatively good quality substantive examination process. For a Paris Convention filing, grant can take as little as four months, although six to nine months is more typical. PCT national phase applications typically take over 18 months, but this can be expedited at additional cost.

Singapore is more expensive than either South Africa or New Zealand, and not as fast to grant. However, it is a major trading hub, particularly for high-tech products. There may therefore be an advantage in some situations to pursuing fast grant of a Singaporean application. Applications can be granted in as little as 15 months from filing, and in certain circumstances where an existing foreign patent has been granted, a PCT national phase application can be granted in as little as a couple of months.

I bet you never thought of obtaining a patent in South Africa, New Zealand or Singapore, right? As the time to obtain patents in the US continues to be exaggeratedly long, you might want to look into these and other countries that provide the promise of a patent before the technology involved becomes irrelevant.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 11 Comments comments.

  1. Richard Gallafent August 4, 2009 7:35 am

    Without in any way wishing to belittle the efforts of the Patent Offices in South Africa, New Zealand and Singapore, I think it worth while pointing out that the UK Patent Office (these days simply called the Intellectual Property Office) can grant patents very fast if you have a good reason to want accelerated search and examination, for example a licensing deal depending on it. The standard of search and examination is high, and the official fees low. In respect of “green” inventions, you can accelerate grant even without any further reasins – just that you want to get in with it. Since May this year there is a “green channel” procedure, and if the applicant gets on with responding to any problems raised, you can go from application to grant in 9 months! and there is no extra fee for accelerated processing… http://www.ipo.gov.uk gives more details.

  2. Dale B. Halling August 4, 2009 1:04 pm

    Very interesting ideas. I would be interested in hearing from anyone who has company that has had success using this strategy to advance their business plans.

    Not only is the US patent system hurting innovation, but Sarbanes Oxley and the new FASB rules on stock options have significantly depressed the technology start-up community. If the US wants to see its economy start growing again we are going to need a vibrant technology start-up sector, see http://hallingblog.com/2009/05/26/innovation-regulatory-road-kill/

  3. Jonathan August 4, 2009 3:17 pm

    One important detail that seems to be missing in this article, I read it twice to make sure I didn’t miss it, is that one needs a foreign filing license to foreign file if the invention was made in the U.S.

    If that is not done, any U.S. patent that is eventually received won’t be valid.

  4. breadcrumbs August 4, 2009 3:46 pm

    …as well as additional troubles for violating BIS rules.

  5. New Here August 4, 2009 4:30 pm

    I have something to add, “Court Quickie”, seems to me if the PTO could, why not ?.
    With as you have mentioned, many inventors to indefinitely have their dreams, hopes and aspirations put on hold, to have such a hold in the courts after the PTO just does not seem right. Seeing years pass in court fights a “Court Quickie” would help too , just cut to the point like a “Judge Judy”, just get up with no need for an Attorney, would speed up the courts and help there too.

    Not a joke, it’s Law’s bad when process is cut short or out. When this happens, becomes common place I can see the Law to cut out the Attorney, as what would be the need seeing a Judge having total power over sides in a case and the outcome. It’s process, in the law made the USA what it is, without or just less process the PTO to become a larger problem and the rest of us, well left with only a fight.

  6. yapex August 4, 2009 11:07 pm

    I’ve seen stats about patent application pendency at the USPTO. I wonder if there’s a further breakdown of the stats showing porations of prosecution duration being attributed to applicants. Specifically after the first action is mailed, many applicants take the maximum amount of time allowed (statutory 6 months) to file an amendment. Some applications take beyond 2 years from FAOM to issue as the result.

  7. Eric August 5, 2009 12:19 am

    Gene Quinn, you fail to mention that a large portion of US patent applications are from international inventors. This means that those inventors are more interested in a US Patent (assuming there is no corresponding local application or PCT), which means more for their business and success. You also forgot to mention that many other contries literally outsource their examination work to the US Patent office (PCT’s).

    Another thing you forgot to mention is that the US Patent office is the only office to be based on a first-to-invent system, meaning that a patent is granted to the person who first conceived and practiced the invention, rather than to the person who first filed the invention with authorities. This system favors individual inventors and smaller companies. Other countries use a first-to-file system which benefits larger companies more than smaller companies or individual inventors – a very, very bad thing for technological innovation and capitalism in general.

    You also forgot to mention accelerated examination and other pilot programs already available at the US Patent Office.

    With all due respect, please research properly before publishing.
    Thanks!

  8. Gene Quinn August 5, 2009 12:48 am

    Eric-

    It would seem that you have an agenda, and I really do not appreciate you saying or implying that what I wrote is incomplete or inaccurate. What I wrote is, of course, both complete and accurate. It is obvious that I did not “forget” to mention the things that you raise. What you raise simply has nothing to do with what I wrote.. So, with all due respect to you, if you are going to comment please keep it real. Every article does not need to be a dissertation on patent law and all aspects, including aspects that are unrelated to the premise of the article.

    Also, allow me to make an observation. You are not required to read what I write, or visit IPWatchdog.com. If you think my research is inadequate or what I write is incorrect, please don’t read IPWatchdog.com. Those who are objective and do not have an agenda of their own realize that what I wrote is correct and well researched. The fact that I didn’t write the article that you wanted to read does not mean I don’t know what I am talking about, or my research is inadequate. You should really get your facts straight.

    -Gene

  9. Adrian Evans August 9, 2009 8:13 pm

    The New Zealand Patent Office aims to issue a first examination report within 20 working days of a Paris Convention filing, which can be useful for applicants wanting an early indication of the novelty of an invention or a quickly granted patent. New Zealand currently has a local (New Zealand) novelty requirement and does not examine applications for obviousness. Legislation presently before parliament will introduce worldwide novelty and an examination for obviousness.

    New Zealand is also a good place to litigate, with a well respected judiciary; some highly regarded lawyers working in the IP area and good support through the patent attorney network.

  10. Chris August 10, 2009 2:28 pm

    This is an interesting idea, GQ. Just throwing this out there: if you do take this route, please bear in mind that you must file in the US within 12 months of filing abroad or else your claims can be ruled invalid under 35 USC 102 (d).

  11. Gene Quinn August 10, 2009 2:30 pm

    Chris-

    Very good point. I could have been more clear, but I was thinking about filing in the US first (which has to be done if the invention was conceived in the US) and then after getting a foreign filing license moving onto a country with quick patent grants.

    Thanks for contributing and raising an excellent point.

    -Gene