2 Strategies to Speed Up Your Patent Examination

August 3, 2016

Jennifer J. Wang

(as published in Inventors Digest)

You conceived of an invention. You spent considerable time, energy and money on prototyping and testing. Your patent attorney prepared and filed your application with the United States Patent and Trademark Office. Yet there it sits...and sits...and sits.

Due to a tremendous backlog of cases at the USPTO, patent applications in the mechanical technologies space can wait an average of almost two years before being examined. But you can do something about the delay.

Track One Prioritized Examination

At the time of filing your utility patent application, you can request "Track One Prioritized Examination," which advances your application to the front of the examination queue for a fee of $4,000 (large entities) or $2,000 (small entities).

The USPTO defines a small entity as (1) a person, (2) a business concern that does not exceed 500 employees, including those of any affiliates, or (3) a nonprofit organization, provided that the person, business concern or nonprofit organization has not and is not under an obligation to assign, grant, convey or license any rights to the invention to an entity that would not qualify for small entity status. A large entity is any entity that does not meet these requirements.

Under prioritized examination, your newly filed patent application may be examined as soon as one to three months after filing, and the current average time to reach a final disposition is approximately six months--shaving significant time off the regular examination process. Prioritized examination should be considered when your product is being brought to market quickly and early patent protection would be valuable. In addition, if your product is expected to have a relatively short life cycle, as is sometimes the case with consumer products, you may want to be able to assert your patent rights while the product is still hot on the market rather than wait until it has become outdated.

Typically, you request prioritized examination when you file your application, though it is possible to request prioritized examination later when filing a Request for Continued Examination (RCE) or a continuation application. Prioritized examination can be requested for utility or plant applications, including continuations, continuations-in-part and divisionals. Applications using prioritized examination are limited to four independent claims and 30 total claims.

An application's prioritized status does not last forever. Once a final rejection is received or the applicant requests an extension of time to respond to the USPTO, the application loses its prioritized status.

Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is an examination acceleration option to consider when you have corresponding foreign or PCT patent applications.

A PCT, or the Patent Cooperation Treaty patent application (also called an "international" application), preserves your right to seek patent protection simultaneously in each of a large number of countries. For each PCT application, an International Searching Authority performs a patentability search. The ISA creates a written opinion regarding the patentability of the invention.

When patent claims are deemed allowable by a foreign patent office or an ISA, the PPH allows the U.S. claims to be examined earlier if the applicant aligns the U.S. claims with the allowable claims. The applicant must amend the U.S. claims to make them substantially identical to the allowable claims and file a request for entry into the PPH at the USPTO. Significantly, no additional USPTO fees are required to make this request.

The PPH can only be requested in the U.S. if patent examination in the U.S. has not begun. Additionally, applications in other countries can be put on the PPH based on a finding of allowability by certain patent offices or the PCT examining authority. PPH availability varies by situation and by country, though most major patent offices participate in at least one PPH program.

For example, if a U.S. application claims priority to a Canadian application that has been deemed allowable by the Canadian patent office, you can request to enter the PPH in the U.S. Once the request is granted, the corresponding claims in the U.S. application advance to the front of the examination queue and receive a U.S. examiner's opinion on the merits within approximately two to three months. Therefore, the Patent Prosecution Highway can be a good option when corresponding claims are deemed allowable by a foreign patent office or a PCT International Searching Authority.

Depending on your situation, one or both of these strategies may be viable options to speed the examination of your patent. They should be carefully considered with your patent attorney to determine the best way to obtain the necessary protection for your invention--sooner rather than later.