Priority Review: Move to Front of Line

INTRODUCTION:

The wait time between filing you patent application and the first office action can be frustratingly long.  Priority Review Track One. See my earlier article for Expedited Examination.  The duration depends upon the Group Art Unit (GAU) to which your application has been assigned.  You may have limited ability to influence the GAU to which your application is assigned.  See my previous article regarding Patent Classification Review.  

I have several pending applications wherein the projected wait time is approximately 2 years.  And that is merely for the first office action.  As you may know, once the examiner reaches your application, the examiner reviews the application (specification, drawings and claims) and may determine that there are in fact multiple inventions claimed.  In that situation, the first thing the examiner will do is require you to chose which invention you want to prosecute.  That is not a first action on the merits and, among other things, delays getting to the substance of your claim of invention.  The first office action on the merits is nearly always a rejection of all claims.  You then must respond (preferably with a telephone interview) and written response to the examiner’s reasons for rejection.  The examiner reviews your arguments and responds with a second office action (second response).  This office action is designated as final.  The game is not over and you can file a Request for Continued Examination (RCE) with payment of $650.00.  

But by now, it may be three years or more since you first filed your application.  Also, my goal is to conduct interviews at each possible opportunity to expedite movement towards an agreement of claims defining patentable subject matter.  

The USPTO has several programs that can allow the process to be expedited.  However, there are significant additional fees that must be paid.

DISCUSSION:

The most direct method of moving to the front of the line is to file a petition for prioritized examination (frequently termed “Track One”).  For a small entity (less than 500 employees), the cost of filing for Track One handling is $2,000.00.  This is in addition to the standard filing fee of $785.00.  If you (the applicant) qualify for Micro-Entity status, the fee is $1,000.00.  Also the standard filing fee for a Micro-Entity will be approximately $390.00. 

To qualify for Micro-Entity status, you must have annual gross income of less than approximately $180.000.00.  See my article Micro-Entity Status

AVANTAGES:

The advantages to filing your application under Track One are significant.  The USPTO will prioritize your application.  An examiner will promptly review your application, conduct a search and issue a first office action.  True to form, the first office action will most likely be a rejection of your claimed invention.  However the examiner must explain why your claims are being rejected.  You will have three months to respond.  During that time you can have a live interview with the examiner.  You can propose amended claims to circumvent the examiner’s reasons of rejections, argue that the examiner’s grounds for rejection were incorrect, etc.  You must file a written response to the rejection.  The examiner may agree with your position or amended claims or the examiner may issue a second (final rejection).  However all of this activity must occur within 12 months of the filing of your application.  

Track One specifies that you will receive either allowance or second (Final) rejection within 12 months of your application.

After the second (final rejection), you can file a request for continued examination (RCE), conduct a second interview and further refine your arguments or claims.  You are now on the Examiner’s active docket and if you have positioned your application close to a place of agreement, your application (as modified) may be allowed. 

CONCLUSION:

If you can afford the USPTO fees, you can expedite action upon your application.  Note that this procedure does not apply to provisional applications.  It also does not alter the time limits for filing for foreign patent protection.  Finally it does not alter the time limits for publication of your pending application.

It does move your application to the active track within the USPTO.  As you know, the technology is continuing to change while your application may be languishing within the electronic records of the USPTO.  

© David McEwing 2020