Expedited Patent Examination

Why Expedite Patent Examination?

Having an unissued patent creates uncertainty. Expediting patent examination helps remove this uncertainty. An issued patent is a potent tool discourages competitors from copying your product innovations. Accelerated patent examination helps you get to issuance quickly.

If you compete in a fast moving space where technology is constantly changing or improving, expedited patent examination may be the best choice toward for preserving your window of opportunity. For startups, expedited examination helps you quickly gain real intellectual property assets and bring confidence to potential investors.

Expedited patent examination is most potent in patent examination groups, or art units, where examination times are predicted to be slow. At the time of this writing, according to U.S. Patent Office patent dashboard, it takes on average about 1 ½ years for a patent examiner to examine at a patent application after it is filed. Your actual time may vary. Some examinations groups are significantly faster, while others are significantly slower. You may want to consider one of the various accelerated or expedited patent examination options available to you if you application is likely to fall into an examination group that does not meet your business timeline.

Time to First Examination by Examination Art Unit

Track One Prioritized Examination

Track One Prioritized Examination gives you accelerated patent examination in exchange for a fee and a few restrictions. At the time of this writing, the fee for a small entity (i.e. a company with under 500 employees) is $1736 plus the regular fee of $664 patent application filing fee. According to U.S. Patent Office prioritized examination statistics, the average time for first examination from the time the track one petition is granted is about 2 months. In my experience, it usually takes about three to five months, from the time of filing, for a patent application to be examined under this program.

This program does have a few restrictions that should not affect most patent applications. The most important one is that your application can have a maximum of 4 independent patent claims, and 30 claims total.

A Track One prioritized examination petition must be submitted at the time the application is filed. Alternatively, it can also be filed with a request for continuing examination(RCE).

12-Month Accelerated Examination

The 12-Month Accelerated Examination Program gives accelerated patent examination in exchange for submitting pre-examination search and analysis to reduce the Examiner’s workload. The patent application is typically examined in less than three months after filing. The search and analysis has to be submitted in a specific format and meet strict requirements set forth by the U.S. Patent Office. The analysis or “accelerated examination support document” is typically 50-80 pages long. Each phrase within each patent claim must be compared and analyzed with the most relevant references found in the search. These documents along with the petition for accelerated patent examination must be submitted when the patent application is filed.

While the U.S. Patent Office only charges a small petition fee to participate in the 12-Month Accelerated Examination program, the amount of work involved for the patent attorney or agent actually make the accelerated patent examination under this program significantly more expensive than Track One Prioritized Examination. In addition, there are several significant limitation and risks:

• The patent application is limited to 3 independent claims and 20 claims total.
• The accelerated examination search and support document become public record.
• Replies to Office Actions can be potentially more complex because they may require updating the search and support document.
• The application can be kicked out of the program during the pre-examination process for technical errors with the drawings or missing documents during filing.
• The accelerated examination search and support documents can be rejected and have to be amended.

While I successfully filed patent applications under this program before Track One Expedited Examination was available, I no longer recommend it. The cost to prepare the application and the limitations on response times and number of claims compared with Track One make this no longer worthwhile.

Information and Resources:

1. Mark Nowotarski interviewed me for an article in IPWatchdog about my experience with the 12-month accelerated patent examination program.
2. US Patent Office main page for the 12-month accelerated patent examination program.
3. An example of an accelerated examination search conducted by me and a trusted colleague, Lin Crampton, and an accelerated  patent examination support document both successfully submitted under the accelerated examination program. The patent received a notice of allowance in less than five months from the day of filing. The application was allowed, as filed, without any rejections.

Accelerating Patent Examination Based on the Inventor’s Age

Are any of the inventors 65 or older? If the answer is yes, then your patent application is entitled to accelerated patent examination under a program called “petition to make special for age.”

Under this program, one of the inventors simply provides written documentation to their patent attorney or agent that they are 65 or older. This written documentation can be any official photo ID such as a driver’s license or passport. After filing the application, the patent attorney submits a petition that states that the patent agent or patent attorney has evidence in their possession showing that the inventor is 65 or older. The petition is automatically granted. The U.S. Patent Office does not charge any fee for accelerated patent examination under this program.

Depending on the examination art unit, the patent application can be examined anywhere from two months to one year after filing. The clear advantage of this accelerated patent examination program is that it is free and automatically granted. The disadvantage is that it can be slower than prioritized examination or the 12-month accelerated examination program.

Patent Prosecution Highway

The Patent Prosecution Highway is an accelerated patent examination program that significantly reduces time to first examination and increases the chances of allowance without rejection. If your patent application was originally filled as a Patent Cooperation Treaty (PCT) or foreign patent application in a participating country and has allowed claims, you U.S. patent application may qualify for the Patent Prosecution Highway.

Similarly, if your U.S. patent application has allowed claims, than your foreign patent application filed in a country participating in the Patent Prosecution Highway can be granted accelerated patent examination under the program.

Where Patent Prosecution Highway really works well is filing a U.S. application under Track One and then filing foreign patent applications, such with the European Patent Office under the Patent Prosecution Highway. Assuming there is not a PCT application, foreign applications must be filed within one year of the original U.S. patent application. Since in my experience, accelerated patent examination under the Track One program generally leads to allowance in less than six months, the risk of foreign filing is significantly reduced.

The U.S. Patent Office has additional resources and information on the Patent Prosecution Highway.

Expedited Examination of Design Patents

In the past, design patents were typically examined in less than a year so accelerated patent examination was not necessary. However, probably because of the recent renewed interest in design patents, examination has slowed down. Six out of ten design patent examination art units are predicted by the U.S. Patent Office to take over a year from filing to examine a design patent application. Two of the ten take more than 1 ½ years. Thankfully, the U.S. Patent Office now offers expedited patent examination of design patents. In order to qualify for this program, you must conduct a design patent search. You do not have to submit the search, but you must disclose to the U.S. Patent Office the classifications that you searched. In addition, there is a petition fee. Currently, this fee is $640 for small entities (i.e. companies with less than 500 employees).

Design Patent Examination Art Units vs Time to First Examination

Other Programs

The U.S. Patent Office creates various pilot programs to help foster innovation in various sectors according to priorities set by the President or Congress. For example, in the past there was the Green Technology Pilot program that allowed accelerated patent examination by demonstrating that the claimed subject matter of the patent application fostered clean energy technology or reduced green house gases. There were 3533 patent applications granted accelerated patent examination status under this program until it expired in March 2012. I successfully had six applications granted accelerated examination status under this program.

Currently, the U.S. Patent Office has several small initiative and pilots programs. These include the Patents for Humanity Program, which is actually a contest, decided once a year, that awards accelerated patent examination certificates to about five to twenty winners and honorable mentions. For more information, see: the U.S. Patent Office Patents for Humanity Initiative. Another current initiative is the Glossary pilot program that runs through June 2, 2015. This accelerated patent examination initiative is currently limited to 200 applications and a limited number of specific patent subject areas. For more information see the U.S. Patent Office Patent Glossary Program Initiative.

My Experience with Expedited and Accelerated Patent Examination

I have successfully had over fifty five applications examined under various accelerated patent examination programs.  These include ten patent applications under Track One Prioritized Examination program, four applications under the 12-month Accelerated Patent Examination program, , seven expedited design patent applications, over thirty petition to make special for age, and six applications under the Green Technology Pilot Program.