Prioritized examination: Too fast and too furious

History of Prioritized Examination

The United States and Patent Trademark Office (USPTO) has for a couple of years proposed a pay-to-play type of patent examination called Prioritized Examination.  The normal course of a patent application is that after filing with the Patent Office, the patent application will sit in queue for examination for about 2 to 3 years based on a first come, first serve basis.

Under a request for Prioritized Examination authorized by the America Invents Act, the patent application is brought up to the front of the line upon payment of a fee.  $4,800 for a large entity. $2,400 for a small entity.

Prioritized examination is the result of the USPTO listening to the complaints of the user community.  The user community was complaining that it took too long for examination.  The user community voiced its opinion that money is being lost and investments are not being made since businesses are waiting for the patent to issue.

The Patent Office originally proposed three different tracks for examination.  Under track 1, examination of the patent application would be expedited.  Under track 2, examination would proceed as normal on a first come, first serve basis.  Under track 3, examination could be voluntarily delayed so that the applications under tracks 1 and 2 would be examined first.  Only track 1 was implemented under the America Invents Act.

Will the maximum number of requests for Prioritized Examinations be reached?

The America Invents Act limits the number of petitions for Prioritized Examination to 10,000 per year.  Based on a report by the USPTO, a total of 1,694 requests for Prioritized Examination have been made from September 30, 2011 to January 3, 2012.  This comes to rate of about 17.83 requests per day for Prioritized Examination.   However, at the current rate of petitions being filed, there is no danger of being denied based on reaching the maximum number since it will take 561 days to reach maximum set by Congress.

For the benefits of 1.3 %

In my opinion, the Prioritized Examination program is great for the inventing community.  It provides a mechanism for expediting examination of a patent application when needed.  For example, it is true that some investors (loosely used) will not invest in an idea unless the idea is protected by a patent.  After all, why would the investor want to compete with others without a patent.  They would be competing as a lowest cost producer or must have some other unique selling proposition.  The investor may have the first mover advantage but sometimes the first mover advantage might not be enough to successfully launch a product or service.  Sometimes, you simply need the patent.

If you multiply 17.83 requests per day and multiply that out by 365 days per year, 6507 requests will be submitted in one year.  The USPTO receives about 490,000 patent applications from foreign and domestic applicants.  6507 requests corresponds to about 1.3% of the total number of patent applications filed yearly with the Patent Office.  Nonetheless, these applicants felt that they would benefit from expedited examination and an issued patent if one did issue by more than the fee for filing the request for Prioritized Examination.   As shown by the statistics, when the user community is asked to put their money where their mouth is, only 1.3% or a small percentage of the technological advances were being affected by delayed examination in the first place.

When is expedited examination not good?

The USPTO appears to be on a mission to reduce patent pendency.  This is for the most part good.  However, they have been too efficient in recent times.  For example, I’ve received an initial office action on a design case in 2.5 months.  I’ve received an initial office action in 9 months on a utility case.  This time period does not allow the inventor sufficient time to test the market and determine whether the idea is marketable.  The patent office is forcing inventors to invest more money in legal fees without knowing the marketability of the invention.  In my opinion, by forcing cash starved startups to put up more money without knowing marketability of the invention is not good for the economy.

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

About the Author

James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

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James Yang is an Orange County patent lawyer and welcomes potential clients throughout California including Orange County, Riverside County, Los Angeles, San Diego, Santa Ana, Irvine, Orange, Anaheim, Newport Beach, Huntington Beach, Tustin, Brea, Fullerton, Buena Park, Mission Viejo, Lake Forest, Laguna Niguel, Stanton, San Clemente, Laguna Hills, Laguna Niguel, Cypress, Laguna Beach, Coto de Caza, Costa Mesa, Aliso Viejo, Ladera Ranch, Dana Point and Foothill Ranch.