US Patent Prosecution

12 Dec 2022 | Newsletter

Joshua B. Goldberg –┬áNath, Goldberg & Meyer, U.S.A.

The pendency of patent applications in the US reached a peak in 2011-2012, as measured by the percentage of utility patents receiving patent term adjustment (PTA). Since that time, the USPTO has taken numerous steps to successfully reduce the average patent application pendency, resulting in an extended period from 2017 to 2021 in which only about 50% of patent applications received some amount of PTA. However, the USPTO has since seen an uptick in the percentage of utility patents receiving PTA, which is an indication that the average pendency at the USPTO is on the rise.

There are multiple possible causes for this result. One possibility is the lasting impact of the COVID-19 pandemic and how it has changed workflow processes at the USPTO. Another reason could be the extent of Examiner turnover the USPTO has seen over the past few years. If true, while this could be at least partly due to the COVID-19 pandemic, it could be based on other causes as well. Either way, there has been a higher-than-normal rate of Examiner turnover at the USPTO, which could be impacting overall patent pendency.

One obvious downside to this shift is that it is now taking longer for applicants to have their US patents granted. For those applicants who want to obtain their US patents as quickly as possible, they should now consider possible alternative strategies, such as filing earlier/quicker than before, making use of alternative examination procedures, such as the PPH or petitions for expedited examination, and the like.

For other applicants, the delay might not be as important as there is the potential additional patent term that can be added towards the end of patent life through increased PTA. For such applicants, this shift may be an overall net positive, but still one that needs to be monitored closely.

For either applicant, the trend is likely to continue for now, as only about 30% of new US patent application filings receive a first Office Action within the allotted 14 months. Any cases receiving a first Office Action after this 14-month period has ended will already start to accrue potential PTA, with even more potentially available depending on the remainder of the prosecution. So, it looks like this shift will be with us for some time, and applicants should shift their strategies accordingly.