Expediting Patent Examination

Introduction

I typically estimate that the patent examination requires 2 or 3 years from filing to allowance of a patent.  However the duration of patent prosecution is often longer for applications pertaining to business methods, e-commerce and document processing. There are procedures to expedite or accelerate patent examination.

The USPTO provides two options intended to expedite the prosecution process.  These options are the “Track One Prioritized Examination” program or the program entitled “Accelerated Examination”.  Both are discussed below.

Track One Prioritized Examination

The program requires payment of a significant surcharge at the time the non-provisionalpatent application is filed.  For small entities, the surcharge is $2,000.00. This is in addition of the base non-provisional application fee of $750.00.  This can be a significant burden for a start-up applicant.  (Note that for a micro-entity, the surcharge is $1,000.00 and the non-provisional filing fee is $375.00.)

The non-provisional application can contain no more that 4 independent claims and 30 total claims.  This may or may not be a problem for the applicant interested in prosecution of the full scope of the invention. 

The advantage is that the USPTO will cause the examination to be expedited in order that the application will either be allowed within 12 months of the filing date or that a final rejection will be issued. (Note a final rejection is not truly final inasmuch as the applicant may file a request for continued examination (RCE) by paying an additional $600 surcharge.)  In order for the USPTO examiner to issue a final rejection, the examiner must have (i) reviewed the application documents, (ii) conducted a search of the relevant prior art, (iii) issued a first office action rejecting all of the claims and providing a written rationale for the rejection including specific citations to portions of prior art, (iv) reviewed applicant’s response including possibly participating in an interview with the applicant or considered applicant’s written response including possible amendment of claims, (v) issued a second and designated “final office action” addressing the applicant’s response, interview comments or amended claims.

Note all of the above steps must be completed within 12 months of the date the non-provisional application was filed.  

As stated above, the applicant can continue prosecution of the finally rejected application by filing an RCE.  The applicant is allowed to file multiple RCEs but the filing fee for the second and all later requests increases to $800.00.  

Accelerated Examination

This procedure requires payment of only a $70.00 surcharge (small entity) at the time the non-provisional application is filed. However the procedure requires the applicant to file a pre-examination support document.  Preparation of the support document is typically a laborious task requiring analysis of all claim limitations with the applicant’s required pre-examination search of the relevant prior art.  

Note the assigned examiner must be satisfied with the contents of the support document and may require a more detailed search to be conducted.  (The support document must include a description of the applicant’s search and search criteria.  The examiner may require a “hand search” be conducted.  Such a hand search requires review of all patents/published applications located within the USPTO database in contrast to filtering the prior art via key word searches, etc.  This may be problematic for an applicant that is relying upon an off-shore search entity.)

The creation of a proper support document may require significant expenditure of time by the applicant’s patent attorney or agent.  This may have a cost greater than the $2,000.00 surcharge for small entities required by the Prioritized Examination procedure discussed above.

Further, the Accelerated Examination procedure is allowed only for applications pertaining to environmental matters, alternative energy, energy conservation or counter terrorism.  The non-provisional application can not contain more that 20 total claims or more that 3 independent claims.  

Preparation of a application support document increase the amount of time that is required for preparation of the non-provisional application.  The support document must carefully prepared as it becomes part of the permanent documented history of the prosecution history.  Lack of care in preparation of the support document can create later problems and unintended limitations of the scope of resulting patent protection.

Conclusion

Although the amount ($2,000.00 for small entity) of the required surcharge may be an impediment for the applicant, I recommend utilization of the Prioritized Examination procedure in contrast to the Accelerated Examination procedure requiring a thorough patent search and preparation of a support document.  Note that this topic is also discussed in my post Prioritized Examination.

Copyright David McEwing, 2019