Though the U.S. Patent and Trademark Office (USPTO) has reduced patent prosecution time a bit during the past five years, it still takes, on average, at least 18 months before the patent examiner acts upon an application. Throw in two or more office actions, and the average pendency of a patent application is more than three years from the filing date to either issuance or abandonment. However, a number of programs are available that can significantly reduce prosecution time.
Track One prioritized examination (PE) was introduced in September 2011 and provides expedited examination of a patent application for an additional fee. Though the additional fee is $4,140 ($2,070 for small entities), examination is significantly compressed. On average, PE results in either a notice of allowance or a final rejection in about seven months. Applicants must request PE at the time the application is filed, or at the time a request for continued examination (RCE) is filed.1
Accelerated examination (AE) also continues to be available, but is generally less desirable than prioritized examination. An AE petition only requires an additional fee of $140, but the other requirements are burdensome. In particular, the applicant must not only conduct a patentabilty search before filing the application, but also submit an Examination Support Document (ESD). The ESD must identify where each claim limitation is supported in the specification and describe how each claim is patentable over the closest prior art — including identifying any claim limitations that are disclosed in the prior art. As a result, many applicants will find prioritized examination to be the more affordable option. In addition, the information required to be included in the ESD may affect patent scope during enforcement proceedings against infringers.
The Patent Prosecution Highway (PPH) program is yet another way to expedite examination for some applicants. PPH is available to applicants when claims in a corresponding application in another participating country — or in an international application under the Patent Cooperation Treaty (PCT) — have been deemed allowable. Requesting examination under the PPH program does not require an additional fee, but applicants must amend the claims in their U.S. application to correspond in scope to the claims allowed elsewhere. A PPH request also must be filed before substantive examination of the U.S. patent application commences.
Though the PPH program typically will not accelerate examination as much as PE or AE, it is worthwhile provided that the required claim correspondence is acceptable. It also is possible to use PPH to expedite examination of a narrower claim set while pursuing broader claims in a continuation application (which itself could be expedited using PE or AE).
The tables below highlight additional aspects of PE, AE and PPH (click or tap images to see larger versions). A few other options for decreasing prosecution time are summarized after the tables.
*Participating countries are Australia, Austria, Canada, China, Colombia, Czech Rep., Denmark, EPO, Finland, Germany, Hungary, Iceland, Israel, Japan, Korea, Mexico, Nicaragua, Nordic P.I., Norway, Philippines, Poland, Portugal, Russia, Singapore, Spain, Sweden, Taiwan, and the UK.
Other programs for expediting prosecution
Full First Action Interview Pilot Program
Applicant may request, without additional cost, an examiner interview before issuance of the first office action provided that the application has no more than three independent claims and 20 total claims. The examiner will conduct a prior art search and provide the applicant with a condensed pre-interview communication identifying relevant prior art and proposed rejections (similar to a PCT Search Report). Within 30 days of receipt, the applicant must schedule an interview with the examiner, and submit proposed claim amendments and arguments. Following the interview, if an agreement is not reached, the first office action will issue. Thereafter, examination proceeds in the usual course.
The first action allowance rate under the program is 30 percent, compared with 13 percent for typical applications. Though this statistic may appear surprising, the pre-interview communication is effectively a first office action on the merits. Therefore, one would expect the first action allowance rate to be higher following participation in this program. Also, this program does not directly expedite prosecution, but it can effectively give applicants an additional office action before a final rejection — potentially avoiding the need for a Request for Continued Examination (which would delay prosecution, often significantly).
After-Final Consideration Pilot 2.0 (AFCP)
Traditionally, many U.S. patent examiners have been reluctant to consider further claim amendments or grant interviews once the examiner issues a final rejection. As a result, many applicants find it necessary to file a Request for Continued Examination (RCE) to continue pursuing a patent (requiring an additional filing fee of $1,200 or $1,700 for a second RCE). The AFCP is intended to allow examiners additional time to consider an applicant’s response after they receive a final rejection. A request for consideration under the AFCP must be filed with a response to the final office action. The response must amend at least one independent claim in a way that does not broaden the claim, and the applicant must be willing to participate in an interview. Applicants do not need to pay an additional fee to request AFCP consideration.
If the examiner determines that any additional searching and/or consideration necessitated by the response can be completed within the additional allotted afforded under the AFCP, the examiner will either allow the application or contact the applicant to request an interview. Though the examiner still has considerable discretion in deciding whether to grant an interview or force the applicant to file an RCE, the AFCP provides an additional incentive to the examiner to consider after-final responses.
Petitions to make special
Petitions to make special continue to be available, but only in limited situations.2 If granted, this option allows an application to be examined out of turn (similar to examination under the PPH). Effectively, petitions to make special are only available for expediting prosecution based on the applicant’s age (65 or older) or health (applicant might not be available to assist in the prosecution of the application if it were to run its normal course). All other categories for which special status was previously possible (e.g., energy conservation, treating cancer, infringement) have either been eliminated or require the applicant to comply with the requirements under AE (including a patentability search and Examination Support Document).
1 Prioritized examination also may be requested after an RCE has been filed, provided that the request is made before the first office action following the RCE filing.
2 Technically speaking, AE and PPH also fall under the category of petitions to make special. Most patent practitioners, however, view these as separate from petitions to make special (due in large part to their recent introduction compared to petitions to make special).