Paris, May 4, 2022 - European applicants and practitioners accustomed to receiving a search report from the European Patent Office within about 6 months of application filing may find themselves frustrated by the speed of examination at the US Patent Office (USPTO). As of August 2021, the average pendency period from application filing at the USPTO to a first Office Action is 16.8 months. Total pendency from application filing to either patent issuance or application abandonment varies from 23.2 months for all applications excluding any applications requiring a Request for Continued Examination (RCE) to 45.7 months considering only those applications in which at least one RCE is filed.
Waiting 2 to 4 years to obtain a US patent may be too long for some patent applicants. This may be especially true for applicants in technical fields with limited periods of commercial advantage, such as the consumer electronics and software-related industries, or those applicants eager to enforce their impending patent rights against potential infringers.
The USPTO offers multiple initiatives to advance the speed of examination. The availability of these opportunities varies based upon the type of application and are frequently unavailable for applications entering the US national stage from a PCT application. This Article outlines the options available at the USPTO to expedite patent examination giving special consideration to potential obstacles for European and other foreign patent applicants and practitioners.
- Track One Prioritized Examination
One of the quickest way to expedite examination at the USPTO is to request Track One Prioritized Examination (“Track One”). Track One provides applicants with the opportunity to reach a final disposition of the application within 12 months from the granting of a special status. For the 2021 fiscal year, the average time from application filing to final disposition for Track One is less than 8 months. In order to meet this 12- month target, applicants are not permitted to petition for any extensions of time or else the granted special status under the Track One program is lost.
Final disposition of the application includes issuance of a Notice of Allowance or a Final Office Action, abandonment, or the filing of a Notice of Appeal. The majority of Track One applications result in a Notice of Allowance (about 52%) or issuance of a Final Office Action (about 40%).
As of September 2021, up to 15,000 Track One requests may be granted by the USPTO each fiscal year, and more than 90% of Track One requests received are granted.
Prioritized examination comes at a price. In addition to the standard filing, search, and examination fees, a Track One request must be accompanied by a fee of $4,200 for large entities and $2,100 for small entities. All fees must be paid at the time of application filing in order for the Track One request to be considered. The foregoing fee is refundable if the Track One request is denied. The Track One request itself is also due on the day of application filing.
European and other foreign (i.e., non-US) applicants should be aware that Track One examination is not available for US national stage entries of a PCT application. Rather, a bypass continuation claiming priority to the PCT application must be filed to request Track One examination.
Further, European applicants should be prepared to amend the claims at filing as Track One examination limits the claims to a maximum of 4 independent claims and 30 claims in total and does not permit any multiple dependent claims permitted. The USPTO provides a non-extendable one-month period after application filing with a Track One request to provide claim amendments that cancel any excess claims and/or remove multiple dependent claims. However, this delays examination as the Track One request will not be granted until the applicant takes corrective action.
- Accelerated Examination
Since Track One was introduced as part of the America Invents Act, the number of accelerated examination petitions has steadily declined. In 2015, which is the last year for which the USPTO provides any statistics, less than 200 petitions for accelerated examination were filed. Further, in 2016, the USPTO requested public comment as to whether the accelerate examination program should remain.
Ultimately, the accelerated examination program still exists. Many aspects of accelerated examination are similar to Track One including a 12 -month goal to reach a final disposition and the unavailability of accelerated examination for US national stage entries of a PCT application. As with Track One, applicants can file a bypass continuation in order to benefit from accelerated examination, and applicants are not permitted to petition for any extension of time or else the granted special status is lost.
The limitations on claims are more restrictive than for Track One. An application for accelerated examination cannot contain multiple dependent claims and must contain 3 or fewer independent claims and 20 or fewer total claims.
Examination is accelerated under the program by placing the initial search burden on the applicant. A request for accelerated examination must be accompanied by a statement of pre-examination search and an examination support document. The statement of pre-examination search must include an identification of the field of search, the date of search, the databases searched, and the search logic used. The examination support document must include, among other things, an information disclosure statement with the most relevant references found in the search and an identification of all limitations in the claims disclosed in the cited references and where such limitations are found in the cited references. A search report from the EPO will not be sufficient to substitute for this examination support document.
While the processing fee owed to the USPTO for accelerated examination is low ($140 for large entities), the cost of preparing the statement of pre-examination search and the examination support document is likely to exceed the Track One petition fee. Further, statements made in the examination support document can create a negative prosecution history that can ultimately be used against the applicant.
- Petition to Make Special
Within the broader category of accelerated examination, examination may be fast- tracked by way of a petition to make special based on special circumstances of the inventor or based on the subject matter of the application. More particularly, a petition to make special may be filed if an inventor is 65 years or older or if the health of an inventor is such that the inventor may not be available to assist in examination that proceeds in accordance with normal examination timelines. In addition, a petition to make special is available for applications for inventions that will materially enhance the quality of the environment, contribute to the development or conservation of energy resources, or contribute to countering terrorism.
No definitive goal for reaching a final disposition of the application is set for these petitions. Rather, these applications are merely advanced out of turn and examined ahead of other currently pending applications.
Notably, these petitions to make special do not require payment of a fee or submission of a statement of pre-examination search and an examination support document. Further, there are no restrictions on multiple dependent claims or number of claims.
- Patent Prosecution Highway
Relying upon a final ruling from a patent office of earlier examination that at least one claim is patentable, the Patent Prosecution Highway (PPH) program accelerates examination by reducing the search and/or examination burden on a patent office of later examination. Unlike Track One or accelerated examination, the PPH program does not establish any definitive goal for reaching final disposition of the application.
Filing a PPH request may, however, shorten the initial pendency of the application. Once the PPH request is filed, a decision to grant the request is usually made within 4 months. Assuming the PPH request is granted and the application is otherwise ready for examination, the application will generally be examined within 2 or 3 months. The initial First Action pendency of an application is thereby shortened to about 7 months. Furthermore, one studyi has shown that application accompanied by a PPH request have a higher allowance rate and are allowed after fewer Office Actions compared to applications not accompanied by a PPH request.
Also unlike Track One or accelerated examination, a PPH request can be made for US national stage entries of PCT applications. No fee is owed to the USPTO, and the application does not lose its special status by taking extensions of time or filing a Request for Continued Examination. Further, no restrictions are placed on the number of claims or against multiple dependent claims.
However, filing of a PPH request can be unnecessarily restrictive on the examination process. In order for a PPH request to be granted, the claims pending at the USPTO must sufficiently correspond with the claims allowed by the office of earlier examination. A claim is considered to sufficiently correspond where the claim is of the same or similar scope as a claim allowed by the office of earlier examination.
This standard continues to apply throughout the examination process. As a result, an applicant’s ability to amend the claims to take into consideration particularities of US patent practice may be limited. For European practitioners, this standard may be particularly frustrating in view of differences between standards of clarity or definiteness and inventiveness in the US compared to Europe. For instance, compared to European examiners, US examiners are often averse to functional language typically used in European apparatus claims and may require applicants to replace or supplement functional limitations with structural language. European practitioners accustomed to a strictly tailored inventive step analysis may be confronted with difficulties in view of the US obviousness analysis. In the US obviousness analysis, there is no concept of a “closest prior art” document forming the basis of the obviousness determination. Thus, applicants must take the obviousness rejection as it is made and cannot modify the combination of references by arguing that some other prior art document is “closest.” Additionally, there is no limitation placed on US examiners as to the number of prior art documents that can be combined to make an obviousness rejection. Finally, US patent law does not include a prohibition in obviousness rejections that corresponds to the prohibition against using intervening or “pop up” references under Article 54(3) EPC which references cannot be used in an inventive step analysis under Article 56 EPC.
Because applications cannot be withdrawn from the PPH program, applicants unable to overcome the rejections of the USPTO while meeting the substantially corresponding standard may be required to file a continuation application without a PPH request in order to have the freedom to amend the claim as necessary. Filing a continuation application puts the applicant at the end of the examination line, which ultimately delays rather than expedites examination.
Effective December 1, 2021, a new PPH Pilot Program between the USPTO and the National Institute of Industrial Property of France (INPI) allowing applicants receiving a favorable patentability opinion from one of the offices to accelerate examination in the office of later examination. For more information on the PPH program between the US and France, more information can be found here.
- After Final Consideration Pilot 2.0 Program
While the After Final Consideration Pilot 2.0 (“AFCP”) program is not a mechanism for expediting examination like Track One or accelerated examination, the AFCP program is intended to advance the goal of compact prosecution by reducing the number of RCEs necessary to reach a Notice of Allowance. The program provides examiners with additional time to consider an application so that a Notice of Allowance can be issued rather than requiring an RCE such that any amendments submitted after final can be searched.
All applications, including US national stage entries of PCT applications, can take advantage of the AFCP program. An AFCP request must be filed concurrently with a response to a Final Office Action in which at least one independent claim is amended i n a non-broadening manner. Assuming that the after final amendment is treated under the AFCP program, the Examiner is provided with 3 hours of time in which to perform an updated search and/or give additional consideration to the after final amendment.
No fee is owed to the USPTO for an AFCP request. Further, no restrictions are placed on the number of claims or against multiple dependent claims.
According to a Juristat studyii from 2019, examiners issue a Notice of Allowance in response to about a quarter of AFCP requests. Given that applications currently wait about 2.4 months after an RCE filing to receive the next communication from the USPTO, the AFCP program works to advance an application to allowance more quickly at least by avoiding this delay associated with RCE filing.
- Examiner Interviews
The USPTO takes the position that interviews are an effective examination tool and generally promote compact prosecution.
From May 2011 to January 2021, the USPTO offered the First Action Interview Pilot (FAIP) Program, which entitled an applicant to an interview with the Examiner prior to issuance of the first Office Action on the merits. Statistics for the FAIP program from 2020 show that the applications taking part in the FAIP program received a First Action allowance at twice the rate of other non-continuing applications.
A LexisNexis studyiii comparing the prosecution speed of issued patent applications in which at least one interview was conducted and issued patent application in which no interviews were conducted found that interviewed cases averaged 1.75 fewer Office Actions.
These statistics support the position that interviews between the Applicant and Examiner are generally advantageous for expediting an application to allowance without the need to participate in any formal USPTO program.
As long as the interview can resolve issues and further prosecution, the USPTO espouses that there is no bad time for requesting an interview. However, upon issuance of a Final Office Action, any interviews are permitted at the US Examiner’s discretion. Therefore, to advance the speed of examination, interviews should be held as early in the examination process as possible.