Patent Pendency and the Value of Strong IP Analytics

What is Pendency?

Patent pendency is a measure of the time elapsed between actions taken by the applicant for a patent and subsequent responses from the patent office at which the application was filed.

One measure of pendency often of interest to applicants is the time between first filing and the final decision (ideally leading to issuance or grant) of the subsequent patent.  For some purposes, however, pendency may also be measured according to other time points in the prosecution including requests for examination and first office actions.

Why Be Concerned About Pendency?

There can be many benefits to minimising the pendency of patent prosecution and securing the granted right as quickly as possible.

A patent is a legal right that permits the owner to stop others from working their invention.  The sooner a patent is granted, the sooner these rights can be enforced to protect an invention in the market.

Inventors and businesses working with fast-moving technologies, or those with short product life-cycles, will favour short pendency times in order to maximise the value of their IP through both sales and licensing.  Further, securing the patent rights puts the business in a stronger position to raise funding and further support its growth.

Extended pendency, however, is not necessarily something to be avoided, and can be strategically optimised.

In certain industries, such as the pharmaceutical sector or some emerging technologies for example, there may be additional regulatory delays in taking a product to market that are separate from the patent prosecution process.  Here, the minimisation of pendency may simply be viewed as less of a concern.  Nonetheless, the clock on the life of a patent is still ticking whether or not it has been granted.  Adopting good practice to streamline the prosecution process may still reduce costs and strengthen a business’s position by having a granted patent.

Extended pendency can also be a strategic tool.  Choosing a PCT filing approach over a national one can give the applicant some control over certain milestones and pendency measures.  Some decisions can be legitimately delayed to allow additional time to obtain necessary information of a commercial or competitive nature that ultimately strengthens the long-term position of the business whilst still capturing an early priority date for the patent right.

Factors Affecting Pendency

Some stages of the patent prosecution process and the time they take are governed by schedules set out in law and regulation.  Further to this, examiner capacity and PTO workload can affect pendency and be beyond the control of the applicant.

The technical scope and complexity of the claimed invention can also cause some patent applications to prosecute more slowly than others.  However, this doesn’t need to be a serious rate limiting factor and there are a number of ways an applicant can influence the pendency of their applications.

How Can the Applicant Influence Pendency?

Adopting good practice and engaging strong IP search and analytics early on in the process can enable applicants to streamline the prosecution of their applications.  It increases the likelihood of a successful outcome and being awarded the IP protection the business requires.  It also saves time, cost and resource minimising unnecessary correspondence and discussion with patent examiners, and can reduce the risk of subsequent successful challenges to the IP.

Having a clear understanding of one’s invention, business plan and the competitive landscape is essential to determining which IP right(s) and filing strategy(ies) would be best to adopt.  This ensures the most appropriate IP rights are pursued and the necessary protection secured as quickly as possible.

Submitting a high-quality application will also assist in minimising pendency times.  This starts with the quality and clarity of disclosures from the inventors.  The keeping of good records and the engagement of the inventors in drafting the application are important here.  A sound prior art search is also essential to understanding how the invention sits within the prior art base and will assist in drafting a strong application.  The higher the quality of the application, the greater the likelihood of a swift and successful passage through the application process as requests for amendments and additional examiner work can be minimised.

The correspondence that occurs between the applicant and the examiner can be smoothed by a well-written application to begin with.  It’s important to respond in a timely manner with well-thought through, clear answers.  Inventors also need to be aware that their involvement doesn’t end with the initial filing and that they may be required to assist the attorney with examiner questions.  The inventors’ timely and accurate responses here can also streamline the overall process.

Pendency at IPONZ

According to WIPO statistics, pendency at IPONZ, for both first office actions and final decisions, has improved significantly between 2011 and 2016. This is excellent news for applicants filing in New Zealand.  Nonetheless, applicants can still help themselves and their businesses by adopting some of the approaches discussed above.

Have a clear understanding of your invention and how it sits within your business.  Conduct IP research and analytics, and engage your inventors, to understand the landscape, draft strong applications and subsequently monetise your IP.  Respond promptly to office actions to streamline the prosecution of your applications.

Alistair Curson

 

References:

Eggers WD, Turley M, Kishnami P. (2018, June 19). “The Future of Regulation: Principles for Regulating Emerging Technologies”. Retrieved November 27, 2018, from: https://www2.deloitte.com/insights/us/en/industry/public-sector/future-of-regulation/regulating-emerging-technology.html

Henry M. (2017, September 21). “9 Factors Affecting the Cost of Patent Protection”. Retrieved November 23, 2018, from: https://www.henrypatentfirm.com/blog/9-factors-affecting-the-cost-of-patent-protection

Mitra-Kahn B, Marco A, Carley M, D’Agostino P, Evans P, Frey C, Sultan N. (2013, June 26). “Patent Backlogs, Inventories and Pendency: An International Framework”. Retrieved November 23, 2018, from: http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.422.4248&rep=rep1&type=pdf

The Trilateral Co-Operation. “Glossary of patent related terms”. Retrieved November 22, 2018, from: https://www.trilateral.net/glossary.html#p

World Intellectual Property Organisation. (2017). “World Intellectual Property Indicators 2017”. Retrieved November 22, 2018, from: http://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2017.pdf

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