Expedited Examination Options for Patent Applications Filed in the United States

Written By Robert Irani and Michael R. Whitt, QC

In the United States, patents are granted and issued through the United States Patent and Trademark Office (USPTO). Each patent application received by the USPTO is examined by a United States patent examiner in the order it is received. How soon the examiner reviews the application can vary greatly depending upon the complexity and technological area of an invention. The typical pendency of a patent application can be between two and five years.

In certain situations, a patent applicant may require or want a more expeditious disposition by the USPTO. Presently, the USPTO offers multiple initiatives aimed at expediting examination of patent applications filed in the United States.

Prioritized Examination

Prioritized examination has recently become an option both for newly filed, original or continuing applications, and for applications in which a request for continued examination (RCE) was previously or will be filed. The goal for applications filed under Prioritized Examination is to have a final disposition within 12 months of prioritized status being granted.

Prioritized Examination for newly filed applications, also referred to as "Track One Prioritized Examination", requires the request to be submitted at the time of filing and the patent application to be “complete” at the time of filing. As well, an application must comply with prioritized examination claim requirements, including no more than four independent claims, no more than 30 total claims and no multiple dependent claims.

The additional fees for pursuing prioritized examination are substantial, amounting to $4,000 for non-small entities, $2,000 for small entities and $1,000 for micro-entities.

Accelerated Examination

Under the Accelerated Examination program, the USPTO will advance an application out of turn for examination if the applicant files a grantable "Petition to Make Special" under the accelerated examination program. The goal is to complete examination within one year.

A request for accelerated examination requires the furnishing of a pre-examination search document (PESD) and accelerated examination support document (AESD), which outline how the claims of the application are allowable over the closest prior art. Some commentators have pointed out that the applicant is made to do the examiner's job of searching completely for prior art.

Applications are limited to a total of 20 claims and three independent claims with the time periods for replying to an office action shortened.

An important consideration is that the AESD, which is like an office action but written by the applicant, may potentially create prosecution history estoppel, disclaiming what is in the prior art. Another consideration is the potential for inequitable conduct for failing to disclose relevant art.

Additional fees are $140 for non-small entities, $70 for small entities and $35 for micro-entities.

Petition to Make Special

A patent application can be made special and patent prosecution can be accelerated on "Petition to Make Special" based on the applicant's age or health, or on the invention which enhances the quality of environment, the development or conservation of energy resources, or contributes to counter-terrorism. These are not automatically granted however, and the threshold conditions may be different for some applications.

Any statement in support of a petition to make special must be based on a good faith belief that the invention in fact qualifies for special status.

A petition to make special on the basis of the above grounds may be filed with the USPTO without a fee. In addition, petitions to make special based on applicant age or health may not require any additional work, such as furnishing a PESD and AESD.

Patent Prosecution Highway

The Patent Prosecution Highway (PPH) program was established by several participating foreign intellectual property offices to expedite the examination process of a patent application that had been filed in one or more of the participating patent offices. Members of the Global PPH program include the United States and Canada, among others.

An applicant receiving a final ruling from an Office of First Filing (OFF) that at least one claim in an application is patentable, may request that an Office of Second Filing (OSF) fast track the examination of corresponding claim(s) in a corresponding patent application filed in the OSF.

The request can be filed after the application has been filed but must be filed prior to the commencement of examination.

While foreign allowance does not guarantee allowance in the United States, PPH applications enjoy significantly increased allowance rates and seem to follow a faster trajectory. However, because PPH applications have already been through an entire prosecution cycle in another patent office, they usually arrive at the USPTO with claims already significantly narrowed compared with a typical unexamined application.

There is no fee under the PPH program.

First Action Interview Program

Under this program, an applicant is permitted to conduct an interview with the examiner prior to first action on the merits of a new application.

Entry into the program must be requested before a first Office Action by the USPTO. When the application is taken up for examination, the examiner will conduct a prior art search and provide the applicant with a Pre-Interview Communication that includes citations to prior art references from the prior art search and an identification of any rejections and/or objections, if at least one claim is not allowable. The applicant must be prepared to discuss issues related to the patentability of the claims.

Some advantages may include: the ability to advance prosecution of an application; enhanced interaction between applicant and the examiner; the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and the opportunity to facilitate possible early allowance. However, there is no acceleration before the examiner interview and if an agreement is not reached during the interview, the subsequent examination is not expedited.

There is no fee under the First Action Interview Program.

Conclusion

In pursuing any expedited examination strategy an applicant is well advised to carefully consider both the full costs associated with each option and the potential for undesirable effects, such as prosecution history estoppel.