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ADJUSTING SPEED OF US PATENT EXAMINATION: OPTIONS FOR FASTER PATENTING

Updated: Jan 9


U.S. Patent and Trademark Office patent examination can last at least two to three years even without significant processing delays caused by U.S. PTO backlog. The application pendency period can be modified by the patent applicant by adjusting the speed of examination.


Patent applicants can slow the examination process by delaying responses to U.S. PTO Office Actions and petitioning for extensions, or by requesting a suspension of action. Patent applicants can speed up examination with early filing, skillful prosecution, effective use of interviews, the appeals process, the quick-path information disclosure statement program, and the ombudsman program.


The U.S. PTO offers options for faster patent examination because some patent applicants require still further speed in examination. For example, product development timelines, the need for attracting investors, or the need to fence off or pursue competitors may require fast patenting or rapid patent portfolio building. The U.S. PTO provides the following tools an applicant can use for expediting or fast-tracking patent examination or for prioritizing a patent application over others filed before it.


I. Accelerated Examination - Target Adjustment: 12 months from filing to complete examination


Patent applications filed with the U.S. PTO are usually assigned to an examiner's docket for examination on a first-in, first-out basis. Additionally, an application is usually not assigned to an examiner's docket until after pre-examination for publication, or about a year and a half after filing. The U.S. PTO will accelerate examination if a patent applicant 1) files a petition and 2) submits a U.S. PTO government fee and 3) pre-examination patentability search results and a statement distinguishing prior art.


The patent applicant must also respond to Office Actions in shortened timeframes to work with the U.S. PTO to complete examination within a target pendency period of 12 months. The patent applicant deciding whether to avail themselves of the accelerated examination program must decide whether the benefit of speed outweighs the risks associated with submitting the pre-examination prior art search results and statements characterizing prior art.


II. Petition to Make Special - Target Adjustment: 6 months to first Office Action


The U.S. PTO will fast-track patent application examination for a patent applicant that files a petition to treat application as "special" based on 1) applicant age of 65 years or older or 2) applicant poor health. The pendency is adjusted by imposing a target of 6 months to first Office Action and advancing the application out of turn on the patent examiner's docket.


III. Collaborative Search Pilot Program - Target Adjustment: early first Office Action


The U.S. PTO will fast-track patent application examination for a patent applicant that cross-files applications internationally and cross-files petitions under the Collaborative Search Pilot Program. The renewed and expanded CSP program provides comprehensive search results from two patent offices for early consideration during examination, improved examination consistency between patent offices, expedited first Office Action on the merits, and fewer Office Actions overall for an earlier disposal or final decision. The CSP pilot program runs through October 31, 2024. Participant availability is limited. The pilot program currently includes three member offices, the U.S. PTO, the Japan Patent Office, and the Korean Intellectual Property Office.


IV. First Action Interview Pilot Program - Target Adjustment: early first Office Action


The U.S. PTO will fast-track patent application examination for a patent applicant that participates in the First Action Interview Pilot Program. An applicant must electronically file a request to participate at least one day before the U.S. PTO issues a first Office Action, a Quayle Action, or a Notice of Allowance. A proper request results in an Examiner conducting a prior art search and issuing a pre-interview communication setting a one-month (30 day) period for confirming or declining an interview. The period is extendible once by one month for a government fee. If an agreement between the applicant and the U.S. PTO examiner is not reached during the interview, the examiner will issue a first Office Action and interview summary, effectively expediting a first Office Action. The First Action Interview Pilot Program is associated with a doubling of observed first action allowances compared with applications not in the program.


V. Patent Prosecution Highway (PPH) - Global/IP 5 PPH Pilot Program - Target Adjustment: early first Office Action


The U.S. PTO will fast-track utility patent application examination for a U.S. patent applicant that files a PPH request before examination begins and for which an indication of allowability of corresponding claims of a foreign application is received from a partnering patent office. The U.S. patent application and the corresponding foreign patent application must share an earliest priority date.


The PPH program leverages positive examination results in one country to enhance efficiency of examination and minimize pendency of examination of a corresponding application in another country. The PPH program is associated with high allowance and first Office Action allowance rates compared with applications not in the program.


VI. Track One or Prioritized Examination - Target Adjustment: 12 months from filing to complete examination


The U.S. PTO will fast-track patent application examination for a patent applicant that files a request and submits a fee for Track One or Prioritized examination. Participating applications will be prioritized with a target final disposal date about 12 months after filing. The average time from grant of a Track One request to a first Office Action on the merits is about one and half months, and the average time to disposition is six and a half months. About half of Track One applications result in a Notice of Allowance and half result in a final Office Action. Participant availability is limited.


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