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Quit Standing on the Sideline at the USPTO; Consider These Paths to Quicker Allowance

Currently, the average time a patent applicant waits to receive a first Office Action from the United States Patent and Trademark Office (USPTO) is 18.9 months. The total pendency for a patent application before a final disposition is achieved (e.g., Notice of Allowance issued, Request for Continued Examination filed, or application is abandoned) is 27.5 months. This number jumps to 37.9 months when applications in which RCEs are filed are included. These long delays can be frustrating for patent applicants. Start-up companies looking to secure patent protection to attract investors can find this long delay at the USPTO detrimental to the company’s ability to survive. Further, applicants looking to use information from U.S. patent prosecution to make decisions about which countries to enter following the filing of a Patent Cooperation Treaty (PCT) patent application may be left making expensive foreign filing decisions without much information about the likelihood of securing a patent.

PTO Dashboard

Fortunately, there are a number of different programs offered by the USPTO that allow patent applicants to significantly advance the pace of patent prosecution. Some of these programs are open to all patent applicants, provided that certain requirements related to government fees, the number of pending claims, and whether the request for entry of the program was timely filed are met. Others have specific requirements related to the technology field involved or the age of the inventors. An assessment of these various programs is provided below. Patent applicants interested in expediting the prosecution of their U.S. patent application should consider applying for one or more of these programs. The result can often be a faster, cheaper, and more efficient path to building a patent portfolio.

Four Options to Speed up Patent Prosecution That Are Available to Most Patent Applicants

Four options that are open to most every patent applicant are: (1) Track One Prioritized Examination; (2) Accelerated Examination; (3) the Patent Prosecution Highway; and (4) the First Action Interview Pilot Program. While each of these four programs has specific requirements for entry, those requirements are within the control of the applicant. Other programs discussed further below are limited by the inventors’ ages and the technology field of the invention, and are thus applicable to a much smaller range of patent applicants.

Track One Prioritized Examination

Benefits: The Track One Prioritized Examination (PE) program provides a patent application special status, with the goal of reaching a final disposition within 12 months of the initial filing of the application. PE applications are easily outpacing this goal, as they are receiving a first Office Action 2 months after the application is filed (compared to 18.9 months for a regularly filed application), and the total pendency for a patent application before a final disposition is achieved is a scant 6.3 months (compared to 27.5 months for a regularly filed application). Such quick decisions can help patent applicants seeking to leverage granted patents for funding. They can also help patent applicants make more informed decisions when it comes time to decide which countries to nationalize in following the filing of a PCT patent application. 

PTO Dashboard 2

Qualify by: A request must be made concurrently with an initial or continuing patent application filing, or concurrently with the filing of a Request for Continued Examination (RCE). The most significant hurdle for many patent applicants is the cost to enter this program. The undiscounted government filing fee is $4140. Small entities, however, need only pay half of that amount ($2070) and micro entities only half of that amount ($1035). While this amount of money up-front may seem steep, the investment often provides a good return. For example, the expedited and more compact examination process can reduce the total cost of prosecution and can improve an applicant’s position by securing a patent more quickly than under the normal patent review process at the USPTO. Currently, the allowance rate after a final disposition occurs in the PE program is about 46%, meaning nearly half of applicants in the PE program are having patents issued within 12 months of filing and without having to pay expenses associated with RCEs. Considering about 30% of all new applications filed at the USPTO are RCEs, achieving allowance without an RCE is an attractive and cost-effective result.

An application is only eligible if it contains no more than 4 independent claims and 30 total claims throughout its pendency. While technically there is a limit of 10,000 requests for PE per year, this limit has never been close to being exceeded. Additionally, applicants have three months to respond to any Office Action. This deadline can be extended in the same manner as under normal practice for an additional three months, but any extension of the deadline results in the application being removed from the PE program and returned to the normal examination timeline.

Accelerated Examination

Benefits: The benefits of the Accelerated Examination (AE) program are the same as the PE program. In other words, the goal is to reach a final disposition within 12 months of the initial filing of the application. This program provides a patent application special status, with the goal of reaching a final disposition within 12 months of the initial filing of the application.

Qualify by: A request must be made concurrently with an initial or continuing patent application filing. Unlike the PE program, the request cannot be made with the filing of an RCE, although the filing of an RCE during an AE examination does not remove the application from the AE program. Also in contrast to the PE program, the cost to enter the program is not a significant hurdle. The fee is only $140, $70, and $35 for undiscounted entities, small entities, and micro entities, respectively.

The most significant hurdle for many patent applications to enter this program is instead the requirement for the applicant to provide both an AE Pre-Examination Search Document and an AE Examination Support Document. The AE Pre-Examination Search Document illustrates the search logic used to conduct the required pre-examination search, while the AE Support Document explains with some level of particularity why the pending claims distinguish over the most pertinent prior art identified by the applicant. To date, applicants have been reluctant to use AE, likely because of the significant expenses that would result from producing the AE Search and Examination Support Documents, and the requirement to characterize prior art on the record before a rejection is even made.

The other requirements related to AE are also more stringent when compared to PE. For example, an application is only eligible for AE if it contains no more than 3 independent claims (as opposed to 4) and 20 total claims (as opposed to 30) throughout its pendency. Further, while PE allows applicants a three month time frame to reply before removing it from the program, AE only affords applicants one month to reply to an Office Action. The penalty for failing to meet this time frame is even more severe—the application goes abandoned, as opposed to just returning to the normal examination pool. Applicants do have the option of filing a continuing application to prevent the subject matter from becoming abandoned.
Notably, all petitions to make an application special, except those based on an applicant’s health, age, or participation in the Patent Prosecution Highway pilot program, must be filed as an AE, and thus require the AE Pre-Examination Search and Support Documents.

Patent Prosecution Highway (PPH)

Benefits: The Patent Prosecution Highway (PPH) program is a bit different from either the AE or PE programs because entry into the PPH program does not set it on a path for final disposition within 12 months. In fact, there is no set time frame for a patent application in the PPH program to be reviewed by the USPTO. The PPH program allows the examiner at the USPTO to rely on the search and examination results from another participating country in which similar claims were deemed allowable, or from a favorable international search report (i.e., a report indicating that at least one claim has novelty, inventive step, and industrial applicability). Thus, until claims are allowed in another country, there is no benefit to participating in the PPH program. Once a PPH program request is submitted, and the search and examination results from the other country are submitted to the USPTO, the patent applicant typically receives a first Office Action within about 5 months. Because patent laws are different in each country, the allowance in one country does not necessarily mean the claims will also be allowed in the U.S. Practically speaking, however, the chances of receiving allowed claims, and receiving them more quickly, are improved by virtue of the allowed claims in the other country and participation in the PPH program.

Qualify by: Beyond the requirements set out above, i.e., having a corresponding patent application in a participating country with allowed claims or a favorable international search report, a patent application is only eligible to be part of the PPH program if no substantive examination has occurred in the U.S. Once a U.S. examiner begins searching prior art to issue a first Office Action, that application is no longer eligible for the PPH program. There are no additional fees associated with the PPH program. 

First Action Interview Pilot Program

Benefits: The First Action Interview (FAI) pilot program expedites prosecution only after the application has been picked up by the examiner. There is no special treatment given to the application between the filing date and the time of the first substantive Office Action. However, once the FAI program begins, prosecution is more compact. The examiner first issues a First-Action Interview Office Action, which is a shortened version of a regular Office Action that merely provides a high level overview of the bases for the rejection. The applicant then has 30 days to reply to the First-Action Interview Office Action by initiating an examiner interview. This deadline can be extended for an additional 30 days, but no further. 

FAIPThe goal of the program is to use the interview to discuss the rejections and reach agreement on allowable subject matter. If agreement is not reached, any subsequent Office Action proceeds in the normal fashion without any expedited treatment. There is no cost to participate in the FAI pilot program, and the result can be a quicker path to allowance with less prosecution history because it can eliminate Office Actions and written responses. In fact, at the time of publication, applicants participating in the FAI program have received first action allowances over 30% of the time, compared to only 13% of the time for all other new, non-continuing applications. Even in instances in which a first action allowance is not achieved, the expedited treatment of the patent application under the FAI program still benefits the applicant. 

Qualify by: Provided that the request to enter the FAI pilot program is submitted prior to the examiner beginning work on a first substantive Office Action, the patent application is eligible for the FAI pilot program. Because a Restriction Requirement is not considered a first substantive Office Action, an applicant may want to request entry into the FAI program at the same time it replies to a Restriction Requirement. Of course, a Restriction Requirement does not necessarily issue in all applications, so applicants interested in the FAI program should either file an application that will likely draw an invention and/or species restriction, or submit a request to enter the FAI program well before the applicant anticipates receiving a first substantive Office Action. An applicant can certainly make the request earlier, even as early as when the application is filed, but often times an applicant is not sure whether it wants to proceed in an expedited manner. It will likely know by the time a Restriction Requirement issues though. Of course, there is always the possibility that an examiner will not issue a Restriction Requirement, so applicants may not want to wait that long before entering the program.

A summary of the requirements of the four programs open to most every patent applicant is provided below. 

 

 Prioritized Examination (PE)

 Accelerated Examination (AE)

Patent Prosecution
Highway (PPH)

First Action Interview
(FAI)

PRE-FILING


 

 

Pre-Exam Search and Support Doc

Allowed claim in eligible country and no OA on merits in US

No OA on merits in US

FEES

$4140 – undiscounted
$2070 – small entity
$1035 – micro entity

$140 – undiscounted
$70 – small entity
$35 – micro entity

$0

$0

ELIGIBLE TYPES

Utility/plant
(including CON/DIV/RCE)

Utility
(including CON/DIV)

Utility
(including CON/DIV)

Utility
(including CON/DIV)

CLAIM LIMITS

4 independent
30 total

3 independent
20 total

No limits

3 independent
20 total

LIMIT ON # OF REQUESTS PER YEAR 

10,000

No limit

No limit

No limit

TIME TO REPLY TO OFFICE ACTION

3 months

Extension terminates prioritized status, but are otherwise allowed

1 month

Failure to meet deadline will abandon application; can file continuing application to preserve

3 months

Extensions are allowed and do not impact PPH status

30 days

Extension for an additional 30 days is permissible and does not impact FAI status

Two Options to Speed up Patent Prosecution That Are Available to Select Applicants

Two additional options exist for some patent applicants to expedite prosecution: (1) Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (2) Petitions to Make Special Based on Applicant’s Health and/or Age. Thus, only a limited number of applicants are able to take advantage of these two options, and these requirements are not generally in the control of the applicant because they depend on the age or health of the applicant, or the type of invention made by the applicant. The applicant cannot just pay a fee, like in the PE program, or file supporting documents, like in the AE program, to be eligible to participate.

Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism

Benefits: Once a Petition to Make Special is granted, the application associated with the Petition is advanced out of turn for examination and will continue to be treated as special throughout prosecution. While the USPTO does not provide a goal for final disposition of these types of cases, it does handle them on an expedited basis so that they are reviewed more quickly than regularly filed applications.

Qualify by: No additional fees are required to file any of these Petitions to Make Special. An AE Pre-Examination Search Document and an AE Examination Support Document are required though.

Petitions to Make Special Based on Applicant’s Health and/or Age

Benefits: Once a Petition to Make Special is granted, the application associated with the Petition is advanced out of turn for examination and will continue to be treated as special throughout prosecution. While the USPTO does not provide a goal for final disposition of these types of cases, it does handle them on an expedited basis so that they are reviewed more quickly than regularly filed applications.

Qualify by: No additional fees are required to file this Petition to Make Special. Further, unlike the previously discussed Petitions to Make Special, there is no requirement for the applicant to submit an AE Pre-Examination Search Document or AE Examination Support Document.

Conclusion

While the program(s) best suited for any given applicant will depend on many circumstances, the four programs applicants may want to give the most consideration to are those that do not involve preparing an AE Pre-Examination Search Document and an AE Examination Support Document, i.e., the PE program, the PPH Program, the FAI program, and Petitions to Make Special Based on Applicant’s Health and/or Age. The PE program may be particularly useful to start-up companies that have also filed a PCT application. For about $2000, or $1000 if filed as a micro entity, the start-up company can have a good sense of the strength of its patent application based on the U.S. prosecution before making costly decisions about entering various foreign countries following the PCT application. Further, if a patent is granted, the start-up company can leverage the quick allowance for further investments. In some instances, the company may want to enter both the PE program and the PPH program, and then use a quick allowance in the U.S. through the PE program to expedite allowances in other jurisdictions through entry of the PPH program in the foreign jurisdictions.

Thus, while the delay at the USPTO to review patent applications continues to be quite long, applicants have a variety of programs at their disposal that can help speed the application through prosecution more quickly than would happen under normal conditions. 

This update was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising. 

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Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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