Expediting Patent Application

Patents @ the Speed of Business ®

Backlogs of patent applications at the U.S. Patent & Trademark Office have resulted in a long patent examination process for many U.S. patents.  In some cases it may take two or more years before a patent application is substantively considered for the first time by a U.S. patent examiner.  However, there are several options available to a patent applicant to expedite this process.

Track I Prioritized Examination

Section 11(h) of the Leahy-Smith American Invents Act (AIA) provides a patent applicant with a fee-based process for requesting the U.S. Patent & Trademark Office to “prioritize” examination of a patent application.  Also known as “Track I” prioritized examination, the request, if granted by the Patent Office, provides the patent application with special status whereby it is moved up in the queue of applications to be examined.  The goal of the Patent Office is to provide a final disposition on the application within twelve months, on average, of the date that prioritized status was granted.  “Final disposition” means that within twelve months one of the following will occur:  (i) mailing of a notice of allowance; (ii) mailing of a final office action, (iii) filing of a notice of appeal, (iv) completion of examination, (v) filing of a request for continued examination (RCE), or (vi) abandonment of the application.

The requirements for requesting prioritized examination include the following.  First, the application must be a utility or plant nonprovisional application.  The procedure does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings.  Second, the Track I prioritized examination request must be filed with the application or, if the application has already been filed, with a request for continued examination (RCE).  Third, the application must contain or be amended to contain no more than four independent claims and thirty claims total, and none of those claims may be multiple dependent claims. 

As of January 1, 2014, a request for prioritized examination costs $4,000 with discounts being available for small entities ($2,000) and micro-entities ($1,000).  The patent applicant must also pay other fees associated with the filing of a patent application, including the filing fee, search fee, examination fee, and any extra claim fees.

Petitions To Make Special

The extra fee of Track I Prioritized Examination can be avoided if a patent application falls within a narrow list of requirements by which an application is deemed “special.”  A “Petition to Make Special” may be filed without a fee if the petition is based on the applicant’s age (65 years of age or older) or health, or if the invention will materially enhance the quality of the environment or contribute to the development or conservation of energy resources or contribute to countering terrorism.  Applications which have been made special will advance out of turn for examination and will continue to be treated as special throughout the entire prosecution of the application, except for appeal. 

Petitions to Make Special Under Accelerated Examination

Accelerated examination is not frequently selected by U.S. patent applicants, especially since the creation of Track I prioritized examination under the AIA.  The disfavor for accelerated examination is due to several factors.  First, an application submitted for accelerate examination is limited to three or fewer independent claims and twenty or fewer total claims, and the applicant is precluded from arguing the patentability of any dependent claim during appeal.  Second, at the time of filing, the applicant must provide a statement that a pre-examination search of U.S. patents and patent applications, foreign patent documents, and non-patent literature was conducted.  Third, the applicant must provide an accelerated examination support document that includes an Information Disclosure Statement citing the references most closely related to the subject matter of the claims.  For each reference, the support document must identify all the claim limitations that are disclosed by the reference, and must provide a detailed explanation of how each of the claims is patentable over the references.  In addition to the significant time and costs associated with preparing the support document, statements contained in the document potentially can be used against the applicant/patentee in a later litigation.


Patent Prosecution Highway                                                                  

The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating intellectual property offices.  For example, a patent applicant that has received a ruling from a participating foreign patent office, or when a corresponding PCT application has received a favorable Written Opinion, that at least one claim is allowable can use that final ruling to fast track examination in the U.S. Patent & Trademark Office.  The claims of the U.S. application must sufficiently correspond (or be amended to sufficiently correspond) to the allowed claim(s).  The PPH is only available if examination of the U.S. application has not yet begun. 

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