Expedited Examination of U.S. Patent Applications

As of December 2012, patent applications filed at the U.S. Patent & Trademark Office (USPTO) had an average total pendency of 2 1/2 years (see USPTO Patents Dashboard).  This means that you can expect at least 2 1/2 years before your patent application is either granted as a patent or abandoned.  For some patent applicants, this time frame is unacceptable and therefore need to expedite examination of their patent application.  Below is a brief discussion of the options potentially available to patent applicants to expedite examination of their patent applications at the USPTO.  As with any matter related to patent rights, make sure to discuss your options with a qualified patent attorney prior to choosing any expedited examination option.

 
Potential Benefits of Expediting Examination

Expediting examination of a patent application has the following potential benefits to patent applicants:

  • Faster patent protection in the event infringement is occurring soon after the filing of the patent application;
  • Increased certainty regarding patent rights early in the product development stage; and
  • Provides incentives for investors if an early indication of allowability is received.

 
Potential Detriments of Expedited Examination

Expediting examination of a patent application also has some potential detriments to patent applicants:

  • Significant increase in government fees;
  • Compacts the legal fees instead of spreading them out over 2-3+ years;
  • Decreases the amount of time for a patent applicant to determine what type of patent protection they want based upon the final commercially developed product; and
  • Lose the ability to “mold” the claims based upon known copiers/infringers;
  • Requires immediate attention to patent prosecution matters.


Option 1: Petition to Make Special

A Petition to Make Special may be filed at any time during the pendency of a patent application.  When a Petition to Make Special is filed with a patent application, the application is examined sooner than a regular filed patent application.  The goal of the USPTO is to examine and reach a final disposition of a patent application made “special” within one-year of filing.   Below are some options to make a patent application special:

No Fee Required

  • Age – Inventor is 65 years of age or more.
  • Health – Applicant has failing health.
  • Environmental – The invention will materially enhance the quality of the environment.
  • Energy Conservation – The invention will materially contribute to the development or conservation of energy resources.
  • Superconductive Materials – The invention relates to superconductive materials.
  • Counter-Terrorism – The invention contributes to countering terrorism.
     

Fee Required (See Fee Amount)

  • DNA Research – The invention relates to recombinant DNA research.
  • HIV/AIDS/Cancer – The invention contributes to the diagnosis, treatment or prevention of HIV, AIDS or cancer.
  • Prospective Manufacturer – The applicant has a prospective manufacturer that is prepared to begin manufacturing the invention but will not manufacture unless they are certain a patent will be granted.
  • Infringer – There is an infringing device or product on the market.
  • Biotechnology – The invention relates to biotechnology applications and the applicant qualifies for Small Entity Status.

 
Option 2: Accelerated Examination

Since August 26, 2006, the USPTO’s Accelerated Examination program allows for examination of a patent application in an expedited manner and provides a final disposition (i.e. Notice of Allowance, Final Rejection, Abandonment) of a patent application within 12 months of the filing date of the patent application.  The petition for an Accelerated Examination is basically a Petition to Make Special.  To qualify for Accelerated Examination, a patent applicant must file (1) petition, (2) petition fee, (3) pre-examination search document (PESD) and (4) an accelerated examination support document (AESD).  There is a limit of 3 independent claims and 20 total claims in an Accelerated Examination application.

 
Option 3: Prioritized Examination (Track 1)

Since September 26, 2011, the USPTO’s Prioritized Examination (Track 1) program allows for a patent applicant to reach final disposition (i.e. Notice of Allowance, Final Rejection, Abandonment) of a patent application within 12 months of the filing date of the patent application.  To qualify for Prioritized Examination, a patent applicant must file (1) a petition (see USPTO Form PTO/SB/424), (2) a petition fee at the time of filing the patent application pursuant to 37 CFR 1.17(c), (3) the USPTO Publication Fee under 37 CFR 1.18(d)(2) and (4) the Other Publication Processing Fee under 37 CFR 1.17(i)(2).  There is a limit of 4 independent claims and 30 total claims in a Prioritized Examination application.  One of the benefits of Prioritized Examination versus Accelerated Examination is that the Prioritized Examination program does not require a pre-examination search document (PESD) or an accelerated examination support document (AESD).