The United States Patent and Trademark Office (USPTO) recognizes that the filing of a patent application is simply the first step in what may be a year(s)-long journey to obtain patent protection for an invention. As with any government agency, where the application is routed significantly impacts how fast it will be considered for examination. Some applications may enter substantive examination within 12 months; other applications may take years to begin the examination process. What if you cannot wait that long? For example, you may identify a competitor who is copying the technology disclosed in your application, or your investors may want to see results. We can help you address these concerns.
There are three ways to jump to the front of the line at the USPTO: (1) Track 1 requests submitted at the filing of the application, (2) accelerated examination requests submitted anytime during examination and (3) requests to enter the patent prosecution highway before examination begins. Each option has its own costs and limitations, identified below.
In Track 1 prioritized examinations, the applicant pays a fee of either $2,000 or $4,000 depending on the number of employees the applicant has. If the applicant has more than 500 employees, it is referred to as a “large entity” and pays $4,000; conversely, if the applicant has 500 or fewer employees, it is referred to as a “small entity” and pays $2,000. In Track 1 examinations, the applicant is also limited to no more than four independent claims and 30 total claims. If you do not originally request Track 1 treatment, do not worry. You can file a continuation application at any time and request that the application receive Track 1 status. You do not even need to amend the application in any way. In our experience, Track 1 applications take anywhere from seven to 14 months from initial filing through issuance of the patent.
For accelerated examination requests, an applicant must submit a Petition to Make Special (“Petition”), which is decided by the USPTO Board of Petitions. A Petition may include specific reasons the applicant believes the Petition is necessary. In the past, the USPTO has identified the applicant’s age or health or the fact that the invention will materially enhance the environment, or contribute to the development of energy or counterterrorism measures as reasons supporting the grant of a Petition. Furthermore, from our review of the USPTO’s records, it appears that Petitions with reasons stated are granted with more regularity than those without. Regardless of the inclusion of a reason, applications for which Petitions may be filed are limited to no more than 20 claims, three of which may be independent claims. Petitions lacking reasons must also be accompanied by a $140 fee for large entities or a $70 fee for small entities. Petitions containing reasons are free. Although the fee for a Petition is much less than for a Track 1 application, the documentation that must be included with the Petition is significantly more onerous.
The documentation includes a pre-examination search and an information disclosure statement. With regard to the pre-examination search, the applicant must conduct a thorough search and identify (1) the field of the search by United States class and subclass and the date of the search, (2) the search terms/logic or chemical structure sequence used as a query, (3) the name of the file or files searched, and (4) the name of the database service. Furthermore, the search is required to encompass U.S. patents, U.S. patent applications, foreign patents and all available non-patent literature. This takes a lot of attorney time and satisfies only one of the two prongs. To satisfy the second prong, the applicant must include an information disclosure statement citing (1) each reference deemed most closely related to the subject matter of each of the claims; (2) identification of all the limitations in the claims that are disclosed by the reference, specifying where each limitation is disclosed for each reference cited; (3) an explanation of how each of the claims is patentable over the references cited; (4) a concise statement of the utility of the invention as it relates to each independent claim; and (5) a showing of where each limitation of the claims finds support in the written description. Again, such a showing requires a significant investment of attorney time.
If the Petition is granted, an examiner is required to meet and confer with the attorney, which is typically referred to as an “examiner interview,” before issuing the first office action. Although an interview typically hastens the examination process, it is not exclusive to the Petition process. Indeed, attorneys can request, and are almost always granted, an interview whenever they ask.
Finally, an applicant may request to enter the patent prosecution highway at any time before the entry of the substantive examination process. There is no fee to enter the patent prosecution highway. The only requirements are proof of at least one allowed claim in a counterpart foreign application and that the claims in the U.S. track the claims allowed in the foreign jurisdiction.
In deciding which approach is best for your portfolio, please consider that Track 1 and patent prosecution highway requests are almost always granted. Furthermore, because of the significant documentation requirements related to requests for accelerated examination, they are rarely requested and only granted about 50 percent of the time. Therefore, when it comes to accelerated examination requests, we recommend applicants elect to simply file a continuation application with a Track 1 request instead of incurring the significant attorneys’ fees required to jump through all the required hoops. Regardless of which approach might best expedite your patent application, let us know if you need your patent now.