When Time is of the Essence: 5 Tools to Accelerate Prosecution of your Patent Application in the U.S. Patent Office

As any inventor knows, obtaining a patent can be a long process. 

According to the U.S. Patent Office (USPTO) FY 2018 Performance and Accountability Report, the average time from the date an application is filed until it receives an initial patentability determination from the patent examiner is 15.8 months.  On average, it takes almost 2 years (23.8 months) to reach a final disposition of your patent application – either allowance or abandonment.  Actual times vary depending upon the art unit to which your application is assigned, and the nature of your technology.

The USPTO continues to have a hefty backlog of unexamined patent applications – 522,149 at the end of FY 2018.

Given this overwhelming caseload within the USPTO, it is understandable that examination can be a lengthy ordeal.  However, in some cases, you may want your patent to issue quickly for business reasons.

This article highlights 5 tools you can use to accelerate examination of your patent application.  Each tool comes with special considerations.

1.     General interview practice

One method I routinely employ to streamline examination is to request interviews with Examiners assigned to my clients’ cases.  When I began practice in the 1990s, this interview practice was done in-person or via phone.  These days, it is most common to conduct interviews via phone or teleconference. 

Oftentimes, speaking with the Examiner to explore their objections can reveal pathways to allowance of a patent.  This is the most cost-effective and efficient manner to expedite any patent case.  The Patent Office does not charge any fee for interviewing a patent examiner.
 
2.     Patent Prosecution Highway (PPH)

Another cost-effective way to speed up issuance of a patent through the USPTO is to use the Patent Prosecution Highway (PPH).  This tool is available if you have corresponding patent applications filed in countries outside the U.S.

Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the patent owner may request fast track examination of corresponding claims in a corresponding patent application that is pending in a second patent office.  In other words, if the European Patent Office allows your application in Europe, you can inform the USPTO about the allowance and ask the Office to fast track your U.S. case in light of the allowed European case.

There is no fee to request participation in the PPH program.  At the time of this writing there are well over 30 PPH participating offices, including the EPO, Canada, Australia, China, Germany, Japan, the UK, and New Zealand.

One consideration for this program is that you need to certify that the claims in your U.S. application sufficiently correspond to the patentable/allowable claims from the other patent office.  Therefore, you need to be satisfied with the claim scope you obtained in the first patent office.  If you want to pursue different claim scope, do not use this option.
 
3.     Track I – Prioritized Examination - $$

Prioritized Examination (PE) is a procedure whereby you pay additional fees to move your case up in line for examination.  The USPTO will only grant 10,000 requests for PE within each fiscal year.  To find out if this limit has been reached in the current year, and/or to see current program statistics, see the Patents Dashboard.

For your application to be eligible for PE, it must include no more than 4 independent claims, 30 total claims, and no multiple dependent claims.  If your case is a national stage entry, you will have to file a by-pass continuation application under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365 (national stage filings are not eligible per se).

The Track I filing fees are $4,140, on top of the regular USPTO Patent Application filing fees due (Basic Filing Fee, Search Fee and Examination Fee).  Small and micro entity fee reductions are available.

If your application is accepted into the Track I program, the USPTO’s goal is to provide a final disposition within 12 months of prioritized status being granted.
 
4.     Petition for Accelerated Exam – Additional filing requirements

The Accelerated Examination (AE) program also aims to complete examination of an application within 12 months from the filing date of the application.  Unlike the Track I option, however, this tool requires significant extra paperwork and case preparation.

The most important feature of this option is the requirement that the patent applicant conduct a preexamination search of U.S. patents and patent application publications, foreign patent documents, and non-patent literature.  In addition, you must provide an accelerated examination support document that includes:

• An IDS citing each reference deemed most closely related to the subject matter of each of the claims;
• For each reference, you must identify all the limitations in the claims that are disclosed by the reference;
• A detailed explanation of how each of the claims is patentable over the references;
• A concise statement of utility of the invention as defined in each of the independent claims; and
• Identification of where each claim limitation finds support within the application.

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There are several additional requirements regarding the documents that must be filed, and the amount and structure of claims for eligible applications.
Thus, while this option does not include the additional filing fees required under Track I, the amount of time you will need to invest to prepare the required filing materials may meet or exceed the Track I filing fees.
 
5.     Petition to Make Special – Circumstances

This tool is available for patent applications within special circumstances, namely:

• The applicant is of advanced age (65 or older), or in poor health; or
• The invention will materially enhance the quality of the environment, contribute to the development or conservation of energy resources, or contribute to countering terrorism.

There is no additional fee for Petitions to Make Special, but you must prove the circumstances that form the basis for the petition.  For instance:

• Examples of inventions that materially contribute to the discovery or development of energy resources include developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. 
• Examples of inventions that materially contribute to more efficient utilization and conservation of energy resources include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc.

 
These 5 tools may help you advance your patent application more quickly through the Patent Office.  If your application is accepted into one of the programs, you may need to meet additional ongoing requirements during prosecution.

The above information is fairly general in nature, and specific additional requirements may apply in your case.  Consult with a registered patent attorney for more information about your individual case, and which tool(s) may be best for you.

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