EXPEDITING EXAMINATION OF YOUR PATENT APPLICATION
The patent examiners at the U.S. Patent Office are generally required to take up patent applications for examination based on the order in which the applications were filed.[i] And current statistics reveal the average wait time for a normal patent application to be taken up and examined (referred to as pendency) is about 17 months, although in some cases the wait can be much longer, as discussed here. As such, one grievance we sometimes hear from inventors is how long they must wait before their application is substantively examined. As explained below, however, the Patent Office allows applicants to request an expedited examination of their application, which can reduce the pendency of the application to about 3 months from the grant of such a request.
This article explains what prioritized examination is and summarizes the requirements for fast-tracking a patent application at the Patent Office.
What is Prioritized Examination?
Prioritized examination is a procedure for the expedited review of a utility or plant patent application, and a way for patent applicants to have greater control over when their applications are examined. The process begins when a patent applicant files a petition or request to make their application “special” and the Patent Office grants the petition. The application is deemed “special” because it is eligible to be taken out of turn for virtually instant examination instead of waiting in the queue with the regularly filed patent applications. The USPTO’s goal for prioritized examination is to provide a final disposition (i.e., an allowance or final rejection) within twelve months of prioritized status being granted.
The Patent Office grants the so-called special status to several types of patent applications. This article is primarily concerned with applications made special as a result of a petition to make special or a request for prioritized examination. For some applications, a fee must be submitted with the petition or request to make special. For other applications, no fee is required. Those differences are discussed below.
Petitions for Special Status that do not require a fee
Patent Office Rule 37 C.F.R. § 1.102(c) sets forth two bases for making an application special without paying a fee: (1) the Applicant’s age or health; and (2) whether the invention claimed in the application would materially: (a) enhance the quality of the environment; (b) contribute to the development or conservation of energy resources; or (c) contribute to countering terrorism. A petition to make an application special on grounds other than the aforementioned options must be accompanied by the payment of a fee.
Regarding the first basis, section 708 of the Manual of Patent Examining Procedure (MPEP) instructs an applicant to submit evidence (e.g., a medical certificate) showing the state of an inventor's health and why the inventor might not be available to assist in the prosecution of the patent application if it were to run its normal course. To obtain special status based on age, the applicant must submit evidence with their request showing or attesting that the inventor is at least 65 years of age.
For the applications that allege to provide a material enhancement to the quality of the environment, a material contribution to the development or conservation of energy resources, or a material contribution to countering terrorism, the applicants must include a statement identifying the specific basis for making their application special when filing their petition. The MPEP cautions that if the applicant’s disclosure does not ostensibly reveal the material contribution to the quality of the environment, to the development or conservation of energy resources, or to countering terrorism, then the applicant should include a statement explaining how the materiality standard is met. The materiality standard does not permit the applicant to speculate as to how the invention may be hypothetically applied to affect the environment, the conservation of energy resources, or to countering terrorism; and the standard does not permit the applicant to enjoy the benefits of advanced examination based on some minor aspect of the invention being directed to environment, conservation of energy resources, or to countering terrorism.
Petitions for Prioritized Examination that require a fee
Without regard to an inventor’s health or age, or the subject matter claimed in the application, the Patent Office offers prioritized examination (a.k.a. Track One) for utility and plant patent applications, including continuation, continuation-in-part, and divisional applications. For those applications, a petition for prioritized examination can be submitted when filing the original application or when filing a request for continued examination (RCE). Design applications, reissue applications, provisional applications, reexamination proceedings, and international national stage applications filed under 35 U.S.C. § 371, on the other hand, are not eligible for prioritized examination.
Patent Rule 37 C.F.R. § 1.102(e) sets out the requirements for requesting prioritized examination in this context. Some of the requirements include a limitation on the total number of claims (no more than 30), a limitation on the number of independent claims (no more than 4), a prohibition of multiple dependent claims, and the application must be filed via the USPTO’s electronic filing system. When the requirements are met and continue to be met by the applicant throughout the prosecution of the application, the USPTO endeavors to provide a final disposition (i.e., an allowance or a final rejection) within one year—making the prosecution of such an application exceptionally fast.
Importantly, however, it must be noted that the special status granted to an application under the prioritized examination program is revokable. The prioritized examination program grants special status until one of the following occurs: (i) applicant files a petition for extension of time to extend the time period for filing a reply; (ii) applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim; (iii) applicant files a request for continued examination (RCE); (iv) applicant files a notice of appeal; (v) applicant files a request for suspension of action; (vi) a notice of allowance is mailed; (vii) a final Office action is mailed; (viii) the application is abandoned; or (ix) examination is completed as defined in 37 C.F.R. § 41.102.
Recent Updates to the Prioritization Examination Program
Prioritized examination is governed by Patent Rule 37 C.F.R. § 1.102(e), which was implemented after the Leahy-Smith America Invents Act (AIA) was signed into law on Sept. 16, 2011. Section 11(h) of the AIA legislation mandated that the Director of the Patent Office could accept no more than 10,000 total requests for prioritized examination.
On Sept. 3, 2019, the Patent Office implemented an interim rule that modified Rule 1.102(e) by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year from 10,000 to 12,000. The Office noted that while the number of requests had increased steadily over the years, the number of applications in the program was a small fraction of the approximately 650,000 applications examined each year. And because the program was not considered detrimental to the quality metrics the Office uses to examine the applications, the program was expanded.
Most recently, on Sept. 24, 2021, the Patent Office implemented another interim rule to increase the limit on the number of annual prioritized examination requests that may be accepted. The rule further expands the availability of prioritized examination requests from 12,000 to 15,000. In implementing this expansion, the Office states: "Through continued monitoring of the implementation of the Track One program, the Office has determined that the program may be further expanded to permit more applications to undergo prioritized examination while maintaining the ability to timely examine all prioritized applications."
Prioritized examination is an excellent way to fast-track your patent application with the U.S. Patent Office. Certain industries, including, for example, those that rely on proprietary software, move quite fast and often too fast to wait for a patent application to be examined in the normal course of business. Accordingly, the prioritized examination program provides time-sensitive applicants with a means to better control how fast their applications are examined. Ask your patent attorney if the program is a good fit for your patent application.
[i] Federal Statute 35 U.S.C. § 131 requires the Director to cause a patent application to be examined; and Patent Office Rule 37 C.F.R. § 1.102 states that applications will not be advanced out of turn for examination except for as provided in the rule.
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