Business is tough, and competition is fierce - timing can make or break success. This is especially true in the patent world. Since the U.S. adopted a first-to-file system on March 16, 2013, the first person to file a patent application is typically recognized as the rightful inventor. If you want to claim ownership of your invention, it’s crucial to file your patent application with the USPTO as soon as possible.
But what happens if your competitor beats you to the punch and files first? Does that mean you’ve lost your chance to secure your patent? Not necessarily. While filing early gives an advantage, there are still ways to protect your invention and possibly get the patent even if someone else filed before you.
When Can an Earlier Filer’s Patent Application Block Yours?
Examiners must base their actions during prosecution on publicly available prior art, such as patents, published patent applications, and other printed publications. Unpublished prior art (such as a pending, unpublished patent application) is generally not considered because it is not part of the public domain and therefore cannot be cited or relied upon in the examination process. Therefore, an earlier-filed patent application can only be used to reject a later-filed application once the earlier application has been published. For most nonprovisional utility applications, this happens approximately 18 months after the priority date unless the patent application was filed with a non-publication request.
This delay in publication for utility applications creates a window of opportunity for later filers to potentially secure their patent before the earlier application becomes an issue.
How Can You Obtain a Patent Faster Than an Earlier Filer?
Imagine a situation where you are aware that your competitor filed a nonprovisional patent application not too long ago - for example, within six months - under standard examination procedure instead of expedited examination, which means the usual timeline for examination (that is, 24-36 months). Note that in this hypothetical example, the first filing is a nonprovisional application instead of a provisional application.
Now, if you file your own nonprovisional patent applcation with a Track One request, you’ll have an advantage. Their application won’t publish until around the 18-month mark, which means it won’t be available as prior art for another 12 months. In contrast, your Track One request will likely be granted, leading to an expedited review just a few months after your filing date - often within two to three months of filing. The goal of Track One is to provide a final disposition (which could be a Notice of Allowance or Final Rejection) within 12 months from the filing date of the application. Indeed in practice, the actual time is usually shorter.
Though rejections are common in patent applications, Track One gives you a significant edge, especially with the right claim strategy planned in advance. You could potentially advance through the patent process much faster than the earlier filer. During the early stages of your application, the earlier-filed patent won’t be used against you as prior art since it remains unpublished, allowing you to move forward more quickly.
Can the Examiner Suspend Your Later Application Due to Someone Else's Earlier Patent Application?
Under 37 CFR 1.103, the USPTO can suspend action on a patent application under certain conditions. Suspension can be requested by the applicant and can also be initiated by the USPTO. While it is technically possible for an examiner to suspend your later-filed application, this scenario is highly unlikely. Examiners typically face large backlogs of cases and limited allotted time for each patent application, therefore it is more likely that the examiners focus their efforts on reviewing published prior art instead of unpublished prior art (unless there is a clear good reason to do so, such as double patenting).
However, one situation where this might occur is if the same examiner happens to review both your application and a very similar earlier-filed application by others. This could happen since the patent applications are assigned to an examiner based on, among other factors, the field and subfield of technology and the technical expertise of the examiner. Thus, it is possible for the same examiner got assigned with both the earlier filed application by your competitor and your application on the same or very similar invention. In such a case, the examiner could issue a suspension, but this can only last for a maximum of six months.
In short, if you know that your competitor has filed an earlier patent application, it’s essential to weigh the benefits of a fast-track filing strategy versus not filing at all. While utilizing Track One filing can help you get ahead and obtain your patent when others filed before you, opting not to file could potentially lead to serious regret if competing products flood the market and undermine your position.
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