Expediting Patent Applications: US
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Expediting Patent Applications: US

We recently discussed options for speeding up grant of a European patent. As we mentioned, reasons to expedite grant include the existence of a potential infringer, or the need to obtain grant to enable licensing or sale.

Today, we’ll take a look at what options are available in the U.S.

Accelerated Examination Program
At first glance, this sounds like a great option. You may pay a small fee (or no fee if your invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism) and prosecution will generally be completed within 12 months.

There are, however, some very significant restrictions. The quid pro quo for quick prosecution is that you get to do most of the work that would otherwise be done by the examiner. That means:

  • Showing how each feature of every claim is supported in the specification.
  • Performing a search on each and very claim. This doesn’t mean just presenting a few documents, either. You have to submit full details of your search statements.
  • Explaining how each claim is allowable over the documents uncovered by the search.

Quite aside from the effort (and cost, given most applicants will use a patent attorney), there are significant concerns among many applicants that being required to be your own searcher and examiner represents a conflict of interest. You’re basically being asked to characterize your invention’s relationship with the prior art – something that is generally avoided by applicants as far as possible to avoid potential estoppel issues (“estoppel” in this context is the legal principle under which asserting something at one stage prevents you from arguing the opposite later. “File wrapper estoppel” means that if you say something on the written record during patent prosecution before the EPO, you will be prevented from asserting anything contradictory later, including during litigation, for example).

There are some other practical limitations, such as a maximum of three independent claims and 20 claims in total. The applicant must also agree to an interview (although in many cases this isn’t necessarily a great hardship).

For these reasons, many applicants avoid using the accelerated examination program.

Prioritized Examination – a better option?

Perhaps in response to the poor reception of the Accelerated Examination Program, the America Invents Act introduced Prioritized Examination, which addresses some of the issues associated with the Accelerated Examination Program. You don’t need to jump through the hoops of doing searches and providing claim analysis. Under Prioritized Examination, these functions are the responsibility of the Examiner, so estoppel issues are no worse than under ordinary examination. You’re allowed more independent claims (4 instead of 3) and more claims in total (30 instead of 20).

So what’s the downside? The main one is that the fee is much higher than for Accelerated Examination: presently it’s $4000 for a large entity (reducing to $2000 for a small entity and $1000 for a micro-entity). However, in many cases this will be cheaper than the non-USPTO costs of having a professional search and claim analysis done for the Accelerated Examination Program. This is particularly true where the applicant is a small or micro-entity.

Whether you choose Prioritized or Accelerated Examination, there are lots of little details about which you need to be mindful. For example, you may be required to respond to office actions faster, taking extensions of time may be problematic, and you need to be aware of what happens when you file an RCE (Request for Continued Examination). Your US patent attorney can explain these restrictions to you.

Other Programs
If you’re over 65 or unwell, you can petition the USPTO to speed up examination. While not as timely as Prioritized or Accelerated Examination, this is a relatively quick and cheap option that usually results in grant (or refusal) within about 2 years (as compared with 2-5 years for standard examination).

The Patent Prosecution Highway (PPH) is a series of bilateral agreements between the US and several other countries (see full list here). The idea is that when you end up with at least one allowed claim in a country that participates in this program, you can use the search and examination results to expedite examination of a corresponding US application. The downside is that you need an allowed claim, and you also need to amend the US claims into conformity with that claim. Given the differences between the substantive patentability standards of different countries, it’s possible that broader or more appropriate protection could be sought in the US than was allowed in the other country.

The Full First Action Interview program involves ordinary examination, but involves a preliminary search and condensed opinion from the examiner. A request to participate in this program must be made before the first Office Action on the merits. The Examiner will then issue the condensed opinion based on the prior art search. The applicant has 30 days from receipt of the opinion to schedule an Examiner interview. Before the interview, the applicant has the opportunity to submit proposed amendments and/or arguments. The interview will involve discussing the objections and prior art with a view to reaching agreement on allowable subject matter. If this can’t be achieved, a first office action will be issued, summarizing the outcome of the interview. Prosecution can proceed as usual. This program has many advantages, including the fact that it involves no official fee. It enables applicants to put their side of the story to the Examiner earlier in the process than any other program, which may be helpful.

Concluding Thoughts
The USPTO has made significant changes to various programs for expediting prosecution over the years. Although some no longer apply, the pros and cons of those that remain are complex. There are many traps for the unwary, some of them significant. If you are considering expediting prosecution in the US for any reason, it’s critical that you engage your US patent attorney, who can take into account your circumstances and needs when advising you of the available options.

 

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