Patent Law News + Insights

How to Speed Up Patent Prosecution at the USPTO

April 26, 2018

This is the first in a two-part blog series on controlling the speed of the patent process. (Read part two here.)

It can take a long time for your application to mature into a patent. As of February 2018, patent applications filed with the USPTO had an average total pendency of 24.2 months. In other words, you can typically expect to wait two years before your application turns into an enforceable patent.

If you can’t afford to wait that long, the USPTO currently offers several different options (we’ve listed our seven favorites below) to expedite examination of your patent applications.

Why should we speed up the patent process?

Speeding up the patent process could benefit your business strategy in the following ways:

  • Fundraising: By supplementing your business with a solid patent portfolio, you can reassure investors that you’ve got a meaningful IP strategy in place and your existing IP is viable.
  • Competitive advantage: The label “patent pending” might offer your invention some degree of protection, but it’s not as effective as actually having an issued patent.
  • Licensing: Licensing can be a great source of additional revenue for your business — and issued patents can give you considerable leverage in licensing and royalty discussions.
  • Enforcement: You can’t assert patent rights against infringing competitors until your patent has issued.

However, you should also keep the potential drawbacks of the process in mind:

  • Higher fees: Most of the options we’ll discuss below are associated with higher government fees — and these fees are generally due over a shorter period of time when you speed up the process.
  • Shorter time frame for amending claims: Before your patent issues, you can amend your claims to cover the most valuable competitor products on the market — but you might miss this opportunity if you get your issued patent too soon (and don’t file a continuation). So it’s sometimes better to wait and see how a field of technology develops after you’ve filed your patent application.

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7 options for speeding up patent prosecution with the USPTO

Perhaps you’re about to submit a patent application — or perhaps you’ve already received a final office action. No matter where you are in the patent process, you have options for speeding up patent prosecution with the USPTO.

1. Track One

Track One is the USPTO's prioritized patent examination program. It aims to give applicants a final disposition within twelve months from the date the Track One request is granted.

Here’s an overview of what Track One entails:

  • Cost: $4,000 fee ($2,000 for a small entity)
  • Number of claims:
    • Maximum of four independent claims
    • Up to 30 claims total
  • Documents: Simple one-page request form; does not require examination support documents (which are much more cumbersome)
  • Examiner interview: Same practices as with regular applications

There’s a limit of 10,000 applications to the program per year. To check how many applications have already been filed in this time period, check the USPTO website. Once the limit has been reached, the USPTO will turn off the ability to file a Track One request for the year.

Compared to the current accelerated examination program, Track One gives your application special status with fewer requirements.

As of April 2018, the average total pendency of a Track One application is just 7.8 months.

At Henry Patent Law Firm, we highly recommend using the Track One program, and we’ve had a lot of success with it. Anecdotally, we’ve found that many examiners do a more thorough review of dependent claims in Track One applications — and therefore often recognize patentable subject matter in the dependent claims, even if the independent claims are rejected.

2. Petition to make special

Petitions to make special apply to only a limited number of patent applicants, so you should capitalize on the opportunity if you’re eligible.

To apply for free, you must meet one of several conditions:

  • You’re seeking a patent for an invention that:
    • Enhances the quality of the environment
    • Contributes to developing or conserving energy resources
    • Contributes to countering terrorism
  • Health: You have medical evidence indicating that, if your application were to run its normal course, you might not be able to help with prosecution
  • Age: You’re older than 65

Otherwise, you’ll have to pay a fee (as set forth in 37 CFR 1.17).

3. Accelerated examination

Accelerated examination is, essentially, a subset of the petition to make special. The program aims to give you a final disposition within 12 months.

Here are the key features of the program:

  • Cost: $140 petition fee ($70 for small entity)
  • Number of claims:
    • Maximum of three independent claims
    • Up to 20 claims total
    • No multiple dependent claims
  • Documents:
    • Pre-examination search document outlining the results of a prior art search against your own application
    • Accelerated examination support document explaining how each of your claims is patentable over the identified prior art
  • Examiner interview: Required before the examiner issues a first office action

There’s no limit on the number of applications per year.

We don’t typically recommend this program; there are a lot of hoops to jump through.

For one, you’ll have to pay to prepare the required documents — and those costs add up fast. For this reason, accelerated examination sometimes ends up costing significantly more than Track One.

You’re also required to characterize the prior art before you’ve actually gotten any claim rejections from the USPTO, which can disadvantage your application in the long run.

4. Patent Prosecution Highway (PPH)

You can file a PPH request only if you’ve already filed a foreign or PCT application, and another patent office that participates in the PPH program has found at least one of your claims to be allowable.

In short, it’s an appropriate option if you’ve filed internationally. Keep in mind that you must file your PPH request before the USPTO begins examining your patent application.

The PPH program doesn’t impose any additional fees, and requires minimal paperwork:

  • Cost: No additional fees required
  • Number of claims: No limit
  • Documents: Simple request form showing correspondence between pending U.S. claims and allowable foreign claims; does not require examination support documents
  • Examiner interview: Same practices as with regular applications

The PPH program doesn’t aim to reach a final disposition more quickly than a standard prosecution — but in the past, applicants have enjoyed a shorter-than-usual pendency.

However, considering the USPTO’s current backlog of cases, using the PPH probably won’t speed things up now.

5. First Action Interview Pilot Program

The First Action Interview Pilot Program is a little different from the previous options. It doesn’t offer your application any special treatment between the filing date and the time of the first substantive office action. Instead, it expedites prosecution after the application has been picked up by the examiner.

To participate, you must file a request before the examiner begins working on a substantive first office action:

  • Cost: No additional fees required
  • Number of claims
    • Maximum of three independent claims
    • Up to 20 dependent claims total

After receiving your petition, the examiner will issue a first-action interview, which is a shortened version of a regular office action. You then have 30 days to initiate an examiner interview. (This deadline can be extended for a maximum of 30 days.)

The interview offers you an opportunity to reach an agreement on allowable subject matter with your examiner during an interview (either on the phone or in person) — which can potentially facilitate an earlier allowance.

But if you don’t reach an agreement, any subsequent office actions will proceed without expedited processing.

We’ve found the first action interview pilot program to be very helpful, especially with complex cases. An examiner interview early in the process can help the examiner get a stronger handle on the invention and the prior art, which can improve their ability to quickly identify allowable subject matter.

6. After Final Consideration Pilot Program (AFCP)

The AFCP is a way to expedite the process of reopening prosecution after you’ve received a final rejection. There is no additional cost involved in submitting a request.

As of this post’s publish date, the AFCP will run till Sept. 30, 2018. But the program has been extended several times, and will probably be extended again due to popularity.

Typically, if your application gets rejected, you have to file a Request for Continued Examination (RCE) to reopen prosecution. Through the AFCP, you can get allowance without submitting an RCE — and possibly speed up the process too.

To qualify for AFCP, you must submit:

  • A request for consideration under the program
  • An amendment to at least one independent claim that doesn’t broaden the scope of that independent claim

Under AFCP, examiners are given an additional but limited amount of time (three hours for plant and utility applications) to search and/or consider responses. Accordingly, they can also judge if it’s necessary — or even possible — to conduct the search under those time constraints.

The examiner will either send you a notice of allowance or schedule an interview to explain the rejection. If it’s the latter, they can subsequently decide whether to allow your claim or issue an advisory action.

7. Quick Path Information Disclosure Statement (QPIDS) program

If you have new information that should be cited to the patent office but have already paid the issue fee for your patent, the QPIDS program can help to speed up the citation process.

As of this post’s publish date, the QPIDS program will run through Sept. 30, 2018. But the program has been extended several times, and will probably be extended again due to popularity.

You have a duty of candor and good faith in dealing with the USPTO, which means that you’re obliged to disclose all prior art that affects your invention’s patentability. And whenever you need to inform the USPTO of any relevant background art during the patent prosecution process, you’d submit an information disclosure statement (IDS).

But typically, if you’ve already paid the issue fee, the examiner will only consider the IDS if you’ve also filed an RCE. This becomes a problem when you receive a search report from a foreign patent office after you’ve paid the issue fee.

The QPIDS program allows you to submit an IDS after paying the issue fee — without also filing an RCE. And you’d file the RCE fee conditionally: If the examiner decides that there’s no need to reopen prosecution, you’ll get the RCE fee back.

You can submit to the QPIDS program only after paying the issue fee, and before the patent itself actually issues. While there are limitations to the program, it’s generally a good tool to use when you need to cite an office action or search report from a foreign patent office after paying the issue fee.

Speeding up the process of writing a patent application

Finally, you can help expedite the process of putting together a patent application by properly tracking the information you’ll need beforehand.

We’ve put together a free invention disclosure record template to help you easily document your inventions. Download it now!

free invention disclosure form download

POSTED IN: All Posts, Patent Prosecution

Michael Henry

Michael Henry is a principal and the founding member of Henry Patent Law Firm PLLC. Michael specializes in creating comprehensive, growth-oriented IP strategies for early-stage companies who are developing emerging technologies.

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