Expediting the grant of a patent requires diligence and the ability to face costs at an early stage. However, there are a number of reasons for expediting the grant of a patent.
First and foremost, a granted patent confers exclusivity rights to its owner. Although provisional patent rights exist for published patent applications, expediting prosecution up to the grant will facilitate enforcement if a third party is infringing the claims of our patent application.
Investors may find granted patent rights more appealing than the mere expectation of rights conferred by a patent application. Granted patents have a higher value in terms of leveraging agreements between parties, such as licensing, or as a counteroffensive in patent litigation.
In addition, from the moment a patent application becomes publicly available, any third party may interfere with the grant process. The European Patent Convention, for example, allows Third Party Observations to be submitted until the examination phase is concluded. Actively expediting the grant process will reduce the window of opportunity for third parties to submit any observations.
It is not uncommon in our practice to find that inventors have published information, or will do so in the near future, that may be cited as relevant prior art against the novelty and/or inventive step of the claims in a patent application. Filing a patent application as soon as possible may be a way to work around such conflicting prior art in countries allowing grace periods.
Before filing the patent application
Dedicating attention to some important aspects that may initially slow down the process of filing a patent application will yield a faster grant in the end.
Due to the patentability constraints of added subject-matter, the information contained in a patent application cannot be extended beyond what was initially described. The way said information is expressed can be amended, as long as the resulting information was conveyed at least implicitly in the patent application as filed.
Accelerating the process and filing a patent application as soon as possible may thus come at a price of having a poorly drafted patent application.
Requesting a patentability report from a patent attorney will provide a broad view of what is already known in the art, and such analysis allows fine-tuning the way a claim is drafted in view of such prior art. A claim that is properly drafted around what is already known in the art will avoid objections from the Patent Office and significantly speed up the grant process. For similar reasons, less ambitious claims, i.e., claims with a narrow scope of protection around the invention, will also speed up the grant process.
Taking the time to produce all relevant experimental data and include it in the patent application before filing will also significantly expedite the grant process, especially when comparative data is required to demonstrate a technical effect over the closest prior art.
When filing the patent application
Straightforward strategies that expedite the European patent grant process include payment of all relevant fees, filing in the appropriate language and format, and waiving the communication under Rule 70(2) EPC, or Rules 161/162 EPC for Euro-PCT applications.
Following this strategy avoids formal objections and ensures that the patent application will proceed to examination once the European Search Report is issued, usually between the third and eighth month of the filing date.
During prosecution
The European Patent Office established a programme for accelerated prosecution of European patent applications (PACE) under which the European Patent Office strives to produce its next official communication within three months from receipt of the applicant’s latest action. The PACE request is not published and third parties will not be aware of the applicant’s wish to accelerate prosecution.
A swift and complete answer to an official communication from the EPO that addresses the entirety of the objections will surely influence how fast a patent is granted.
Several additional strategies are available to applicants, and European patents can be granted as fast as 20 months from filing. However, the champion of speedy grants is probably the Chinese National Intellectual Property Administration, with more than 26,000 patents filed and granted in less than 6 months (for example, patent CN 118002605 B was filed on 10 April 2024, published one month later, and granted in 51 days after filing, on 31 May 2024).
Interested in a speedy grant? At ABG-IP we are more than happy to assist you.
