Is it possible to get your patent first before an earlier application is patented?
In the old days, the US patent system gave rights to the one who was first to invent. That meant that if someone filed a patent application before you, there were ways to obtain your patent even though your filing date was later. Now, the USPTO operates on a first-to-file principle.
Need to get a patent earlier than others? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can expedite your US patent application.
First-To-File vs. First-To-Invent
I’m old enough to remember when the USPTO would grant a patent to an inventor who could show they were first to invent even though someone else applied earlier. Those days are gone. The US Patent Office now abides by the first-to-file rule. A later filer can no longer argue that they were first to invent in order to beat the earlier applicant.
When can an earlier filer’s patent application be used to block your application?
An earlier-filed patent application may be used to reject a subsequently filed application, but only when the earlier application is published. Nonprovisional utility applications are published around 18 months from the priority date.
Design patent applications, however, are never published. Only granted design patents are published. So if you are concerned about the possibility of an earlier design application blocking your design application, the earlier-filed design application cannot be used in a prior art rejection unless and until it is granted.
These publication delays, or nonpublication in the case of design applications, open up a window of opportunity for a later filer to get their patent sooner.
What are the options for a later applicant to get their product patented first?
At the outset, determine whether you will file a design or utility patent application, or both. The type of application will dictate your options for expediting examination. The key is to get your application examined before the earlier filer’s application is published.
So how can a subsequent filer get their patent sooner than the earlier applicant? For utility applications, consider Track One or a special petition if an inventor is at least 65 years old. For design applications, request Rocket Docket.
How can you get a design patent sooner than an earlier filer?
A design patent applicant can submit a Rocket Docket request which will lead to an examination in a couple of months after the grant of the request. Currently, the average wait time for an initial design application review is about 17 months. This is the average as we have had several cases taking more than two years to receive an initial examination.
A Rocket Docket request, therefore, can get your design patent application examined and granted even before an earlier design application receives its initial review.
For example, suppose you are concerned about another party who might have already filed a US design patent application. Perhaps, you launched a website or online listing showing your product. Or you may have disclosed your concept to a potential manufacturer.
You don’t know for sure, and there is no way to find out if they filed a design application. Again, design applications are never published. If the bad actors are located overseas, they may be required to first file in their foreign country and obtain a foreign filing license before they can apply in the US.
Let’s assume the bad guys filed a US design application about 4 months ago, but without a Rocket Docket request because they are cheap or unfamiliar with this option. According to the average timeline, their application will still take another year or so to receive the initial examination. Thereafter, it may still take a couple more months to pay the issue fee and then receive the granted certificate assuming their application is allowed without rejections.
Suppose you file your design application with a Rocket Docket request about 4 months after their filing date. You will receive an initial review in about two to three months. If there is a rejection, you will have up to three months to respond, or six months at the latest if you pay the required extension fees. Assuming your application is allowed, you may receive a granted design patent within one year of your filing date.
In fact, your product may be patented before the other guy’s design application is reviewed even though they filed 4 months before you.
How can you get a utility patent sooner than an earlier filer?
Let’s assume a similar scenario when someone else may have filed a utility patent application about 4 months ago. We are talking about a nonprovisional application as opposed to a provisional. We will assume they did not file a Track One or a petition based on the elderly age of an inventor.
Now suppose you file your nonprovisional utility application with a Track One request about 4 months after their filing date. Their earlier-filed application will publish at approximately the 18-month mark, so that will be 14 months from now. In the meantime, your Track One request will be promptly granted leading to an initial review within a couple of months of your filing date.
Since rejections are common in utility applications, you should expect at least one Office Action and possibly more. Nevertheless, a Track One request will give you substantial advantages over an earlier filer. At a minimum, someone else’s utility application filed months before yours will not be used against you during the initial stages of your Track One application because the earlier application has not yet published.
Can your later application be suspended due to someone else’s earlier patent application?
It is possible that the examiner might suspend your later-filed application. Practically, this seems highly unlikely. Examiners typically have a backlog of hundreds of cases to review. They have enough to do in searching published prior art. How will they find the time and diligence to search for unpublished applications with an earlier filing date?
In my opinion, one scenario where this might happen is if the same examiner happens to come across an earlier-filed application for a very similar invention. In this situation, the examiner might issue a suspension of action which can only last for a maximum of 6 months.
This appears to be a small risk. Even if an unlikely suspension were to happen, you have to ask whether you would be better off filing a patent application with a fast-track strategy versus not applying at all.
If you choose not to file, don’t regret your decision if and when copycat products flood the market and undercut your price.
