Expedited examination at the USPTO

Posted On :January 16th, 2013 By James Yang

The following petitions for expedited examination and accelerated examination, programs and techniques are available to applicants to reduce average prosecution pendency at the Patent Office. They are used to cut to the front of the line instead of waiting on a first come-first served basis, reduce misunderstanding that might cause the examiner to reject the application, and speed up examination.  The purpose is to give preference to those patent application which either the Government or the applicant deems important to cut to the front of the line.

I. Accelerated Examination

For all applications, the applicant can petition for accelerated examination. Upon grant of the petition, the patent application will go to the front of the line. Because you are requesting the patent office to expedite your patent application, they also expect you to respond on an expedited basis. The time periods for responding to the Office Action are shorter than normal so be prepared for the rapid fire time frames. The entire process is supposed to result in a final disposition of the patent application in less than 12 months. Final disposition is either a patent grant or final rejection.

The primary downfall of the accelerated examination procedure is that the applicant must conduct a patentability search and make statements to distinguish the prior art references over the present invention. During litigation, defendants can and will scrutinize each of these statements to prove that your patent is invalid and the defendant does not infringe on your patent. Simple put, opposing counsel can and will use these statements against you.

II. Age and Health

If the inventor is 65 years or older then a petition to make special based on the inventor’s age can be filed with the Patent Office to have the applicant examined out of turn instead of on a first come first served basis.

If the inventor’s state of health is such that he or she might not be able to assist in the prosecution of the patent application, then a petition to make special can be filed based on health reasons.

The Patent Office used to allow a petition to make special to speed up examination of your patent application based on infringement and other bases. However, the Patent Office has replaced those petitions with these other routes described in this blog post.

III. Patent Prosecution Highway

The United States Patent and Trademark Office has agreements with foreign patent offices that allow applicants to request that their patent application be fast tracked under a patent prosecution highway (PPH) program.  This program is designed to take advantage of the work performed by other patent offices when a patent application is filed in 2 or more countries.  Where the patent prosecution highway program has been set up between two different patent offices (e.g., USPTO and EPO), the country of second filing will expedite the patent application if the country of first filing has indicated that at least one claim is allowable in the patent application.

This program primarily benefits foreign applicants because the U.S. application must originate from a foreign country to fast track the U.S. application.  The USPTO has to be the second filed patent application. 

Click here for a list of countries for the Patent Prosecution Highway.

IV. Temporary and Pilot Programs

The USPTO has introduced a few proposals and pilot programs in an effort to speed up examination of certain application which either the inventor or the government deems important.

Click on the following links to see if they are still available and how to apply.

Green Tech (Closed)
First Action Interview
Project Exchange Program (Closed)

V. Prioritized Examination

Under the Prioritized Examination program, an applicant can pay money to have the application moved to the top of the stack. I call this the pay to play option. The governmental filing fee is $4,800 for a large entity and $2,400 for a small entity. However, unlike accelerated examination, expedited examination does not guarantee final disposition within 12 months. Expedited examination merely places the patent application on the top of the stack for examination.

Expedited examination is a better option than accelerated examination because you don’t have to make statements distinguishing your invention from the prior art which can and will be used against you. Generally, one of the goals during patent prosecution is to minimize statements and arguments because these statements can and will be used against you during litigation. For example, if you make a statement such as x=y during prosecution but this would be fatal to your case during litigation, you would be held to the statement that x=y during litigation.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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