Introduction to Prioritized and Expedited Patent Examination Procedures (Part Three) – Chapter of the United States –

By Ran Wang and Han-Mei Tso

繁體中文

Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China and Japan.  For the third part of this series, we will focus on the expedited patent examination procedures in the United States.

The United States Patent and Trademark Office (USPTO) currently offers three programs that allow a patent applicant to petition for expedited patent examination: (1) prioritized examination; (2) accelerated examination; and (3) patent prosecution highway.  Each program has its own eligibility and documentation requirements, and will be described in more detail below.

In addition to these three programs, the USPTO may also grant special status to an application for expedited examination on the basis of the health or age of the inventor or joint inventor.

  1. Prioritized Examination

Prioritized examination, a.k.a. Track One, is available for U.S. utility and plant applications.  Eligibility for prioritized examination includes continuing applications, but excludes provisional applications, reissue applications, and design applications.  Prioritized examination is also available to applications filed with a request for continued examination (RCE) under 37 C.F.R. § 1.114.

For international applications, an RCE needs to be filed concurrently with the request for prioritized examination if the international application has already entered the national stage under 35 U.S.C. § 371.  However, prior to entering the U.S. national stage, an applicant may seek prioritized examination by filing a bypass continuation of the international application instead of entering the U.S. national stage.  Grant of prioritized examination by the USPTO is subject to a cap of 10,000 applications per fiscal year.

To qualify for prioritized examination, an application should not contain more than 4 independent claims, more than 30 total claims, or any multiple dependent claims.  No pre-examination search report is required for prioritized examination.  The USPTO fee for prioritized examination is $4,000 for large entities, with discount rates of 50% and 75% for small entities and micro entities, respectively.  At the time of filing, the application must include a specification, at least one claim, and a drawing when necessary.  Also, the application must be filed with an executed application data sheet, or with the inventor’s oath or declaration executed by each inventor.

The goal of prioritized examination is to provide the applicant with a final disposition, e.g., the mailing of a Notice of Allowance or a final Office Action, within 12 months upon the grant of prioritized examination.  As of May 2019, the average time between the grant of prioritized examination and the issuance of the first Office Action is 1.72 months in fiscal year 2019, and the average time between the grant of prioritized examination and final disposition is 6.87 months.

  1. Accelerated Examination

An alternative to prioritized examination is accelerated examination.  Types of applications eligible for accelerated examination are similar to those of prioritized examination, except that design applications are eligible for accelerated examination while plant patent applications and applications with RCEs are ineligible.  Moreover, there is no annual limit on the number of applications admitted for accelerated examination.

Turning to the USPTO requirements, an application is eligible for accelerated examination if the underlying application contains no more than 3 independent claims and no more than 20 claims in total, with no multiple dependent claims.  A request for accelerated examination may be filed without any USPTO fees if the invention will materially (i) enhance the quality of the environment; (ii) contribute to the development or conservation of energy resources; or (iii) contribute to countering terrorism.  Otherwise, the USPTO fee for accelerated examination is $140 for large entities with discount rates of 50% and 75% for small entities and micro entities, respectively.

Despite lower fees compared with prioritized examination, accelerated examination is procedurally more complex and requires more paperwork upfront.  Notably, accelerated examination requires the applicant to conduct a pre-examination search on the claimed invention and to submit an accelerated examination support document (AESD).  In the AESD, the applicant must include an information disclosure statement (IDS) that cites references believed to be closely related to the subject matter of each claim.  The applicant must, among others, include an identification of all claim limitations that are disclosed by the references, specify where the limitations are disclosed in the cited references, and explain in details why the claim is believed to be patentable over the cited references.

Historical statistics show that accelerated examination has similar effect as prioritized examination in reducing examination time.  However, the popularity of accelerated examination is much less than prioritized examination, and has seen a declining trend over the past decade.  This is largely because the required statement by the applicant in the AESD with respect to how claim limitations are disclosed by the cited references will become part of the prosecution history and file wrapper. Such a self-statement could undermine the applicant’s position down the road while defending the resulting patent in future disputes.   Moreover, any materially false statements in the AESD could provide a basis for patent challengers to charge inequitable conduct and thus potentially invalidate the resulting patent.

In view of declining interest in the accelerated examination program, the USPTO has been soliciting public comments on whether to retain or discontinue the program since 2016.

  1. Patent Prosecution Highway

Patent Prosecution Highway (PPH) is a patent examination pilot program established by the USPTO and foreign patent offices based on bilateral or multilateral agreements.  Under PPH, if a U.S. application has a corresponding foreign application that includes at least one allowed claim, then the U.S. claim corresponding to the allowed claim in the foreign application may be accepted for expedited examination.

To participate in PPH, an applicant must timely file a request before examination of the U.S. application has begun.  Along with the request, the applicant must include a table explaining the correspondence between claims of the U.S application and the foreign application.  Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are not eligible for PPH.  Participating in the PPH program is free, and there is no limit on the number of claims.

The PPH program has been popular due to its effectiveness in reducing the time and cost and simplifying the examination for the related patent applications across the jurisdictions.  In 2018, it took on average about 5 months from grant of a PPH request to issuance of the first Office Action, wherein about 20% of PPH-participating applications were allowed at the first Office Action and overall more than 80% of PPH-participating applications eventually reached allowance.

Conclusion

The USPTO has developed a number of programs for expedited patent examination, in an attempt to accommodate the needs of applicants in a variety of circumstances.  It is thus advised that a patent applicant may consult an authorized and experienced patent practitioner to make good use of these programs when possible, and develop a patent filing strategy in conjunction with the overall business plan.