Patents can be very valuable in your business — so it makes sense to want to get them as fast as possible. How long does it take to get a software patent in the US, though?

The answer isn’t as simple as you might think. Read on to understand why and what you can do about it!

What is the lifetime of a Patent

There are three types of patents: utility patents; design patents; and plant patents.

utility patent is generally valid for 20 years after the date of its earliest filing. Design patents provide protection for 15 years from the date that the patent is issued, while patent protection for plant patents lasts 17 years.

Software patents are mostly classified as utility patents as they mostly improve computer functionality or perform computing tasks in an unconventional way. By definition a utility patent is issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof. It is the most common type of patent issued in the US, accounting for over 90% of the patents issued by the USPTO.

Therefore it is fairly accurate to state that software patents typically last for 20 years from the effective date of filing.

Before June 8, 1995, patents in the US were granted for seventeen years from issuance. Now, they last for twenty years, but from the effective fIling date. To determine the length of your patent, find the earliest filing date and the grant date of the patent. In many cases, the earlier the filing date, the longer the term will be and the longer the term, the more valuable the patent. For example, each additional year for a pharmaceutical patent can be worth billions.

So how long does it take to get a Patent?

Since the life of the patent starts from its filing, the speed of getting a patent out of the US Patent and Trademark Office (USPTO) is of paramount importance.  The sooner your patent issues, the more protection you get. That is why the question of how long it takes to get a US patent is of interest.

The average time taken to obtain a software patent varies, depending on the type of patent and the complexity of the invention. The entire process of getting a software patent can take between two and five years. According to September 2022 data, the average first office action pendency is 18.5 months for all patents.

first Office Action Pendency

First Office Action pendency refers to the average time it takes for a patent application to be filed and for a First Office Action to be mailed by USPTO. The term “pendency”, refers to whether the application is in the midst of awaiting a decision. The measure of First Office Action Pendency is the time between the first USPTO action and the applicant’s reply to complete their application. The average of all First Office Actions mailed within a three-month (one-quarter) period is the first action pendency number. It is measured in months.

The specifics of the pendency for each art unit are shown next.  For software inventions, the relevant curve is for art unit 2100, and it is around the average of 18 months.

The Examination Process

Once you file your patent application, the case is in an examination waiting queue. In the examination, the invention described and claimed in the invention is compared to prior art by the Examiner in the Patent Office. Typically it takes two years. 

First Office Action Estimator

The USPTO adopted a new method for assigning patent applications to patent examiners in fiscal year 2021 and is based on Cooperative Patent Classification. To estimate your wait time to examiner, the USPTO provides a First Office Action Estimator. Entering the serial number of a patent application will give you an estimate of how long it takes for a First Office action on that particular patent application to be issued.

You can access the First Office Action Estimator here:

Alternatively, if your application serial number is known, you can log in to Patent Center or Private PAIR to get estimates of how long it will take to issue the First Office action in that application. If the application is not yet classified, a first Office action estimation won’t be made available. The majority of applications will be classified within three months of filing.

Review in the First Office Action

Once it comes out of this waiting queue, it is examined by a USPTO examiner. After getting a better understanding of the applicant’s invention, the examiner will search the prior art to determine if the claimed invention is in compliance with all statutory requirements. The process is as follows:

A. Understand and Identify Any Utility for Invention

The entire claimed invention must be useful. This requirement limits patent protection to inventions with a certain amount of “real world” value. 

Examiners must review the application in order to find any claimed utility. The applicant has the best opportunity to explain why the invention is useful. A complete disclosure should include some indication of the practical use of the claimed invention. This statement should explain the purpose of an invention or the use of the invention (e.g. how a compound can be used to treat a specific disorder). 

It is important to note that the notion of a “practical app” in the evaluation and evaluation of utility is not the same as the idea of whether a judicial exemption is included in a “practical” application in the evaluation of subject-matter eligibility. No matter what form the statement of utility takes, it must be able to explain why the applicant believes that the claimed invention is useful. 

A person may claim more than one utility or practical application. However, only one is required. An applicant can also rely on contemporaneous art to prove that the claimed invention is useful.

B. review of the detailed disclosure and specific embodiments of the invention.

Written descriptions will give the most complete explanation of the applicant’s invention. They should include illustrations of the invention, explanations of how it relates to the prior art, and explanations of the relative importance of different features. Examiners should continue to evaluate the application by

  • (A) Determining the function of an invention, that is what the invention does when it is disclosed (e.g. the functionality of the programmed computer);
  • (B) Determining the features required to achieve at least one asserted practicable application.

The USPTO can help patent applicants by preparing applications that clearly describe the invention.

C. Check the Claims

The examiner will carefully examine the patent claims, which define the rights granted by a patent. Claim analysis is designed to determine the boundaries of protection sought by an applicant. It also helps to understand how claims relate to and define the invention that the applicant has claimed. 

Before deciding whether a claim is patentable, examiners need to first analyze the language. Examiners must begin their claim analysis by identifying each claim limitation and then evaluating it. The claim limitations will outline the steps or actions that must be taken for processes. The claim limitations for products will identify discrete physical structures and materials. 

Examiners must then link each claim limitation with all parts of the disclosure that relate to the claim limitation. This should be done in every case, regardless of whether or not the claimed invention uses means- (or step) plus-function language. Examiners will be able to correctly interpret each claim limitation under the specifications if they use the correlation step.

A claim does not have to be limited by language that implies or makes an optional feature or step, provided it is reasonable. These types of claim language might raise questions about their limiting effects:

  • (A) Statements of the intended use or field use, including statements in the preamble.
  • (B) “Adapted to” and “Adapted for” clauses
  • (C) Clauses “wherein” and “whereby”,
  • (D) Contingent limitations,
  • (E) Printed matter
  • (F) Terms with functional language.

The examiner sends out the office action, and then you have 3 months to respond.  The process is as follows:

Eventually, you will either reach an agreement with the examiner and the case is granted, if not, you can appeal her decision.

Software Examination at USPTO For Patent Eligibility

Software applications are under the following statutes:

  • 35 USC Section 101: patent eligibility (abstract idea) showing how the invention speeds up computer performance.
  • 35 USC Section 112: the detailed specification that shows developers how to use or implement the invention, including how the invention speeds up computer performance.
  • 35 USC Section 102: Novelty
  • 35 USC Section 103: Non-obviousness subject matter.

Software that improves computer functionality, such as spreadsheets and web browsers, is also patent-eligible. However, patent eligibility is based on the “technical improvement” requirement. While the rule is vague, it can be useful when analyzing software applications. The challenge is to clearly identify the technical improvement and make the nexus between the claims and the technical improvement. This can be a difficult challenge if the claim description does not sufficiently describe the technical improvement.

In addition to the requirements for patent eligibility, software inventions can also satisfy statutory subject matter objections. For example, in a software patent application, the software should be used to implement an algorithm for a particular task. However, the scope of the claim should be narrow enough so that it pre-empts the field and falls outside of the patentability requirements.

Challenges To Getting A Software Patent

From the founder and investor’s viewpoint, they can also protect an important part of a startup’s product. While they may be prohibitively expensive and time-consuming to obtain, software patents offer the potential to provide a barrier from competitors to give the startup time to grow into a Unicorn.  Other considerations for founders include funding and time required for a successful software patent application, among others.

Some developers prefer open-source software with no patent protection.  Many developers believe that software patents block their freedom to work, and further patents prevent innovation, kill competition, and generate undeserved royalties.  However, these developers have misconceptions about the ease of getting patents.

A software patent may be the most lucrative option for an innovator, but it can be a costly process. Patent eligibility is determined by the technical details of an invention, so if your invention is vague, it’s likely to be deemed an abstract idea. To avoid this classification, focus your description on specific computing technologies.

Patents should not be granted for an obvious idea or practice. In fact, the USPTO routinely rejects patents for obvious and non-novel ideas. In addition, software patents may be rejected if they don’t meet the “written description” requirement. Most software patents only describe abstract goals and vague techniques. In these cases, the patentee must disclose how to implement the invention and how the software invention improves computer performance to overcome the abstract idea rejection.

Finding the correct patent to protect your invention is crucial. Software patents should be as specific as possible and describe how your software improves the performance of computers. A patented program may improve computer functionality, require fewer resources or solve a computing challenge in an unconventional way. Ultimately, you should be able to protect your work against infringement if you’ve developed a unique feature. Just be sure to keep these in mind while writing your software.

Image Credit: Unsplash

How To Get A Software Patent Faster

The process of obtaining a U.S software patent is lengthy, but it can be expedited by filing a software patent application as early as possible.

Further, if you have a need for speed, do not file a provisional application since it is essentially a one-year holding bin and then you get to enter the examination queue only after you convert the provisional to a non-provisional utility patent application.

It’s important to understand that there are several ways to speed up the process. For example, a high-traffic art unit that handles artificial intelligence/deep learning technologies can take almost twice as long.   Also, due to eligibility issues, an examination may be tougher and may force appeals, which can add a few extra years for issuance and additional fees. Winning an appeal is not guaranteed. Moreover, the application process takes a minimum of 21 months.

In order to expedite the process, you can submit your application through the USPTO’s fast-track program. Under the Prioritized Patent Examination Program at USPTO, your application will be examined by an examiner within four to six months. During this time, the USPTO will require you to pay a higher fee than standard patent applications. However, your application will be more likely to be granted if you meet certain conditions.

America’s competitive advantage is fast innovation. The USPTO’s Track One priority examination allows you to receive a final disposition in about twelve months if you have to move quickly with your ideas. Track One is offered by the USPTO for priority examination of utility and plant patent applications. Track One grants your application special status without requiring you to conduct a pre-examination search and with fewer requirements that the current accelerated examination program.

The limit on the number and priority of examination requests that can be accepted during a fiscal year has been increased to 12,000 from September 24, 2021.

A prioritized examination can be requested for a fee when a plant or utility application is filed. One request for priority examination can be granted to a Request for Continued Examination in a utility or plant application. Track One has been used by thousands of applicants. Get on board the FAST track for the prioritized examination!