IP: 3 accelerated patent prosecution options

How counsel can speed up patent examinations

When managing a patent portfolio, it is important to understand and control the speed at which patent applications are examined and prosecuted. The U.S. Patent and Trademark Office (PTO) and several other international patent offices have procedures that are designed to enable applicants to accelerate examination.

1.       Track One Examination (Prioritized Examination)

Under the America Invents Act, Congress created a program called Track One Examination. Under Track One, the applicant files a complete application that includes a specification, claims, an abstract, drawings and a declaration. Additionally, the applicant is required to submit the standard fees required for filing of the application and an additional fee. Currently, the additional fee is $4,800. Track One, however, is a limited program and only 10,000 Track One applications may be filed per year. However, as of April 13, only 2,221 Track One requests had been made for Fiscal Year 2012.

2.       Accelerated Prosecution

In order to have an application considered more quickly with only a minimal petition fee ($130), an applicant may choose to file a petition to make special. One petition to make special is the Petition to Make Special Under Accelerated Examination Program. An application filed under this program guarantees that a final disposition (e.g. final rejection or an allowance) will be reached within 12 months of filing.

This program requires the applicant to conduct a search and prepare an accelerated examination support document. Essentially, the applicant (usually through an attorney) must make statements concerning novelty and non-obviousness of the claims in light of art that has been found by the search. Since 2006, less than 4,000 applications have fulfilled the requirements.

3.       Patent Prosecution Highway

Another program that affords an applicant an opportunity to accelerate examination is the Patent Prosecution Highway (PPH), for which there is no fee. Whereas applications are normally considered in the order in which they are filed, participation in the PPH means that the applicant’s application will be examined out of turn.

In order to take advantage of PPH, the applicant must file a petition, which indicates that at least one claim has been indicated as patentable or allowable in a corresponding case, the corresponding case at a minimum has to have at least the same filing date (other requirements may apply), claims must match the claims as deemed allowable and several other formalistic requirements.

Additionally, there are a limited number of countries or regions that are currently participating in PPH. In order to gain the most from the procedure, a filing strategy can be devised that takes into consideration the speed of examination in particular countries. For example, there are procedures to have an application examined fast in Europe and Canada. However, it is important to consider the formal requirements and foreign filing license requirements when structuring an accelerated strategy using PPH.

It also is important to note that the PPH only accelerates until the application until the mailing of the first action. Thus, after the mailing of the first action, the application will be considered in turn with all other applications on the examiners docket according to the normal schedule.

Conclusion

When accelerated prosecution is desired, the above mentioned options allow for selecting of a strategy that allows for selection between overall speed, amount of initial work in preparing the application and associated costs at the patent office. Additionally, after filing of a patent effective use of examiner interviews can continue to allow for increased speed of prosecution.

Contributing Author

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Andrew Weaver

Andrew Z. Weaver is a partner at Novak Druce + Quigg where his practice is focused on the prosecution and reexaminations of patents. He can be reached...

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