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Helping U.S. Patent Applicants Get Speedy Examination

U.S. patent applicants often have an interest in expediting the patent examination process.  The desire to speed examination can result from issues related to the availability of an inventor, possible infringing activity by a third party, business conditions or the advantageous nature of the technology that require a clear understanding of a stake holders patent rights, or other factors.  The U.S. Patent and Trademark Office (USPTO) has multiple official initiatives aimed to expedite examination of patent applications.  There are also a variety of unofficial ways an applicant can help advance prosecution at strategic points throughout prosecution.  These official and unofficial procedures can provide benefits such as examination of applications out of turn, minimized prosecution time, and removal of typical delayed steps.

Official USPTO Programs to Expedite Examination

The USPTO’s website provides organized, detailed information about USPTO programs to expedite prosecution, including the appropriate times to engage each program and the specific requirements to qualify for each program.  A brief summary of these programs follows including required fees and select program qualifications.  Upon determining which program may be right for a particular application, the program’s full requirements should be reviewed.

Programs To Request Upon Filing

  • Track One – Prioritized Examination ($4,000 except $2,000 for a small entity and $1,000 for a micro entity; limited number of claims)
  • Accelerated Examination ($140 except $70 for a small entity and $35 for a micro entity; requires prior art search by applicant)
  • Glossary Pilot Program ($0; program open through June 2, 2015; requires a glossary in the application)

Programs To Request Before The Mailing Of A First Action

  • Petition to Make Special based on inventor’s age or health ($0)
  • First Action Interview Program ($0; guarantees an examiner interview before an action is mailed)
  • Patent Prosecution Highway ($0; requires allowable claims in a corresponding application in a qualified foreign jurisdiction)

Programs For Use During Prosecution Before Allowance

  • Examiner interviews ($0; interview guaranteed after a non-final office action but are at the examiner’s discretion after final office action)
  • After Consideration Pilot 2.0 ($0; program open through September 15, 2015; for filing with replies to final office actions)
  • Pre-Appeal ($0; request form must be filed with a Notice of Appeal and a brief of arguments five pages or less)

Post-Allowance Programs

  • Quick Path Information Disclosure Statements ($140 fee plus RCE fee; RCE fee is refunded if prosecution is not re-opened in view of the IDS filed with the RCE; only for registered EFS-Web users with USPTO deposit accounts)

Programs Always Available

  • Patents Ombudsman ($0; assists applicants in getting applications back on track after a breakdown in prosecution)

Unofficially Expediting US Prosecution

Various unofficial techniques to speed U.S. prosecution are in the hands of applicants and cost nothing more than some effort and time.  The strategic deployment of these techniques during prosecution can help applications move through the examination process more quickly.

Requesting Status Updates

  • During prosecution, an applicant can call the examiner to inquire about an application’s status (i.e., when the examiner next expects to work on the case), which can prompt examiner action. Formal status inquiries can be filed, although these may not reviewed by examiners.  For example, applications sometimes become accidentally miscategorized on an examiner’s docket, and without an applicant calling the examiner, this oversight may not be corrected for an extended period of time, resulting in the application languishing unexamined on the examiner’s docket.

Courtesy Calls To Examiners

  • Upon filing a paper requiring only limited examiner action, calling the examiner to inform them of the filing can help the paper be handled quickly. For example, the filing of an RCE with an IDS in reply to a Notice of Allowance will typically require less examiner action than an RCE with an Amendment in reply to an Office Action.  Identifying such RCEs to the examiner can help them be considered more quickly.

Preemptive Prior Art Arguments

  • Keeping in mind that undesirable prosecution estoppel can arise from written arguments, providing written arguments distinguishing newly added claims over prior art can help the examiner more quickly evaluate their patentability.  Similarly, providing written arguments distinguishing claims over prior art newly but unofficially identified by the examiner in an interview or in an advisory action can help the examiner more quickly move toward allowability.

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Christina Sperry is a Mintz patent attorney who drafts and prosecutes patents for clients in the electrical, mechanical, and electro-mechanical fields. She represents companies and academic institutions in the medical technology field and helps protect patent innovations for medical and surgical devices.

Colleen Witherell