Sometimes you may need a quicker patent protection due to business, licensing, or investment reasons. If you want to speed up the patent prosecution process and have your application examined quickly, there are several options to consider. These approaches can lead to a faster review by the examiner, potentially resulting in an expedited allowance.
Petition to Make Special
If cost is a major concern for you, you may consider the inexpensive option first, that is, petition to make your application "special" under 37 CFR § 1.102, meaning it gets advanced on the examiner’s docket. There are several grounds on which you can file such a petition, some requiring fees and others being fee-exempt.
The petition can be filed based on the age (over 65) or poor health condition of the applicant/inventor without a fee. This allows their patent application to be moved to the front of the line for expedited processing, potentially cutting months or even years from the usual waiting time.
To use this option, the applicant simply needs to submit proof of their age, such as a birth certificate or affidavit, or a statement or medical documentation showing evidence of the health condition, along with the petition. The benefits of this option include (a) it is free, and (b) significant time saving - a final decision normally would be given within 12 months, rather than the typical multi-year wait.
Track One Prioritized Examination
If cost is not an issue for you, you may want to utilize this expedited examination program. This is a USPTO program that allows applicants to expedite the examination process for a utility patent application, often resulting in a final decision within 12 months of filing. This option requires the payment of an additional fee, which varies depending on the applicant’s entity status. Currently, the fee for a request for Track One examination is $ 4,200 for large entity, $ 1,680 for small entity, and $ 840 for micro entity.
There are certain additional requirements for a request for Track One examination. For example, you must file electronically and limit the application to a maximum of four independent claims and 30 total claims. You can request Track One prioritization by submitting the appropriate forms and fees when filing your patent application or with a request for continued examination (RCE) for already filed applications.
Applications under Track One are typically examined within 12 months from the filing or prioritized request date, compared to the typical timeline, which can take years. Note that accelerated timelines apply not just for the examination, but also for applicant responses to office actions. That means, if you request an extension in response to an Office Action during Track One prioritized examination, your application will lose its prioritized status. Once the prioritized status is lost, your application will revert to the standard examination queue, potentially delaying the prosecution timeline.
Patent Prosecution Highway (PPH)
If you’ve already filed a corresponding patent application in a foreign country (or a regional patent office) and received a favorable decision, you can request fast-tracked examination under the Patent Prosecution Highway. A significant number of patent offices have participated in the PPH program globally, including the United States, Japan, China, European Patent Office (EPO), Korea, and many more.
After a favorable decision (such as an indication of patentability) from a participating patent office, you can submit a PPH request in the USPTO, accompanied by copies of the allowed claims and relevant examination documents such as the claim correspondence table and translations if required. Filing a request for PPH does not require a separate official fee.
However, there are additional requirements regarding the claims to be presented to the USPTO. Specifically, the claims in the subsequent application must substantially correspond to those allowed in the first application.
Note that PPH request can be filed anytime during the patent prosecution as long as the application has not yet received a final rejection or notice of allowance from the USPTO.
Comments