Speed Of Prosecution

Sometimes clients want an educated guess on how quickly their foreign patent applications will issue as patents. This is a very difficult question to answer, partly because issuance depends on the closeness of the prior art, the reasonableness of the examiners, the skill of the patent attorney, and so forth. Sometimes the whole process is delayed at the behest of the applicant. In Japan, for example, the applicant does not even have to begin examination (by paying the examination fee) for five years after filing. The flip side of the coin is that the patent offices in some countries tend to rely heavily on the opinions of others. Many foreign patent offices require their patent applicants to disclose the results of prior art searches done by other patent offices. Our standard practice is to send the foreign patent offices copies of any corresponding issued U.S. or EPO patent, and to amend the foreign claims to match the issued claims (to the extent possible).

The United States, New Zealand, and South Africa examine patents application automatically, in due course. One potential pitfall of foreign patent practice is that U.S. practitioners may not be aware that in most other countries and regions, substantive examination is not commenced until they expressly request it. This includes Australia, Canada, China, EPO, Great Britain, India, Japan, Korea, and the Russian Federation.

Some countries have modified examination, which can greatly speed up prosecution. In Israel, section 17 (c) to (f) of the patent law allows immediate allowance if the same claims are granted in an issued patent in Austria, Australia, U.S.A., Germany, Denmark, U.K., Russian Federation, Japan, EPO, Norway, Canada or Sweden. Australia and Mexico have similar provisions in their law, and the same process works unofficially in China (PRC) and Canada. The EPO allows expedited examination, without additional charge, merely for the asking. But don't take advantage of the offer too much. A chief of one of the examining units told me in a private conversation that they keep track of which patent offices routinely request expedited examination, and tend to reject future requests from those firms. In any event, the EPO will not proceed with expedited examination on an application that is still pending before the PCT. Their strong preference is to wait until they receive the IPER from the PCT.

Time from application (or request for examination) to issuance varies widely among countries. The U.S. and Japanese patent offices each claim that the average time to issuance is about 22 months. The EPO is currently reporting the delay to be about 44 months. In most countries maintenance fees must be paid during the pendency of a patent application. Where prosecution doesn't even begin for several years, such as when an EPO regional phase is filed off a PCT application, the patent office requires the applicant to pay "catch up" maintenance fees for all the years since the priority date.

Time spent on appeal seems to run a year to a year and half in all the major countries. As of July 2005 the USPTO instituted a new pre-appeals review process , which so far has returned results within a month or two. That avenue is highly recommended. To avoid delay, applicants often file a divisional application, and continue prosecuting the divisional concurrently with the appeal. Note that in Japan, one must file an appeal to qualify for filing a divisional.