TAKEAWAY: Depending on an Applicant’s goals and motivations, the Applicant may have several options to slow down prosecution before the USPTO, such as to delay office action(s) or the ultimate allowance, but such delay tactics may incur additional fees, impact patent term adjustment, and more.
Many times, an Applicant is interested in getting a U.S. patent application allowed by the U.S. Patent and Trademark Office (USPTO) as quickly as possible. However, in other instances, an Applicant may be interested in slowing down or delaying the prosecution of an application. For example, the Applicant may be developing a commercial product and may seek more time to settle on the claims it wishes to pursue in examination. Alternatively or additionally, the Applicant may be looking to push off prosecution costs, for example, into a next fiscal year, until funding comes in, etc.
There are several ways by which an Applicant can slow down prosecution before the USPTO. The following provides several options or considerations that may be available for an Applicant. Nevertheless, the following is not a comprehensive list.
First, if the Applicant has not yet filed a U.S. non-provisional application in the USPTO, the Applicant could first file the application as an international PCT application. Then, before the 30-month date from the original priority date, the Applicant could enter the US national stage from the PCT application. Such an approach would delay the prosecution of the U.S. non-provisional application and push off the filing and prosecution costs. Still, the filing of the PCT application does include somewhat significant filing fees, but, in some instances, the Applicant may be filing a PCT application to preserve the right to file in other countries anyway.
Second, with the filing of the U.S. application, the Applicant could file the application without filing fees. The USPTO will subsequently issue a Notice to File Missing Parts, providing additional time for the Applicant to pay the filing fees, which ultimately delays processing and examination of the application. Applicants should be aware that late payment of the filing fees incurs a surcharge under 37 CFR 1.16(f). With respect to potentially entering the U.S. national stage but omitting the filing fees, it should be noted that the basic national fee must be paid prior to the expiration of the 30-month deadline to avoid abandonment of the PCT application as to the United States. This time period is not extendable.
Third, once the USPTO begins examination (e.g., with the mailing of a Restriction Requirement or an Office Action), the Applicant can take advantage of extensions of time to extend extendable deadlines. Although extensions of time do require official fees, the payment of said fees can extend the respective deadline and defer costs associated with the preparation of the response. It should be noted that any reply filed more than three months after an action reduces PTA, regardless of the set reply period for that action.
Fourth, if prosecution before the USPTO necessitates a Request for Continued Examination (“RCE”), the Applicant can concurrently request a suspension of action for the application for up to three (3) months. Such a request does incur a processing fee, in addition to the RCE fee, and impacts patent term adjustment for the suspended period.
Fifth, regardless of how prosecution of the original U.S. application is going, the Applicant has the option to file a continuation application, which is examined as a new application and typically waits in the examination queue before receiving a first Office Action, though the timing varies. Importantly, if the original application is beyond the original reply time frame (e.g., beyond two months for a Restriction Requirement or beyond three months for an Office Action), the Applicant must pay the necessary extension of time fees in the original application to ensure it is co-pending at the time of filing the continuation application.
There are a lot of factors to consider in prosecution before the USPTO, including when to accelerate prosecution or when to slow down prosecution. Patent practitioners can take into consideration various factors and provide various strategic options to the Applicant to align prosecution before the USPTO with the Applicant’s goals.