For startups, time is the biggest enemy. They must achieve profitability before running out of capital, i.e., they must survive the Valley of Death.
Given how important patents are to attracting capital, startups can’t afford any delay in obtaining their first patent, or probably their second or even third. Smart investors know that only issued patents can be enforced, licensed, or serve as collateral for a loan. In contrast, because they provide no rights, patent applications have no real value – until they issue.
Yet by its nature, the U.S. patenting process is inherently pokey, moving at what seems to be a snail’s pace. For example, the average delay between filing and examination currently is over 19 months (and for some technologies approaches 24 months), and a lag of 3 to 6 months is typical between submitting a response to an Office Action and receiving the next communication from the USPTO. For some applications, the waits are much longer. Of course, the longer it takes to convince the examiner that the claims are patentable, the longer it takes for the patent to issue.
Given the sluggishness of the normal U.S. patenting process, employing one of the mechanisms for expediting prosecution can be absolutely vital for startups.
Recognizing that truth, your startup should consider its best approach for safely landing on their examiner’s expedited “Special” docket and then rapidly achieving allowance. Unquestionably, a rock-solid patentability search empowers an applicant to deliver to the examiner only claims that are highly likely to be found patentable and quickly result in a valuable patent.
To hasten achievement of that goal, the claims should:
- Present only one type of innovation (e.g., device, method, or composition, etc.);
- Pose only a single independent claim;
- Clearly provide one (and preferably more in case one of them turns out to be weak or unhelpful) “points of novelty” or strong distinctions over the prior art;
- Define their terms carefully; and
- Be supported by a fully enabling description.
To land on the examiner’s Special docket, your startup should file a Petition to Make Special, if applicable, with their U.S. application. Otherwise, they should pursue Track One, or possibly take a ride on the PPH, carefully following all rules to maintain Special status. Above all, speed is vital.