By: Shaun R. Vavra
Since the America Invents Act (AIA) was signed into law in September 2011, the average overall pendency of a patent application at the U.S. Patent and Trademark Office (USPTO) has been reduced. Nevertheless, on average, applicants still experience a delay of about 16 months from the time a patent application is filed before receiving a first office action. Below are ten tips for expediting prosecution and reducing pendency at the USPTO:
The PPH is a set of initiatives between participating patent offices that allow an applicant to expedite prosecution if a final ruling indicating that at least one claim is allowable has been received from a partnering PPH patent office. A few of the countries participating with the USPTO in the Patent Prosecution Highway program include: Australia, Canada, Germany, the United Kingdom, Japan, and Korea.
The Track One prioritized examination program allows an applicant to submit a request and pay an additional fee to have an application accorded prioritized status during examination. In most instances, the Track One program results in a final disposition within twelve months of filing the application. Among other notable restrictions, applications filed with a Track One request may not contain more than four independent claims and thirty total claims and must be accompanied by a prioritized examination fee of $4,000 (for large entities).
Similar to the Track One program, the USPTO permits applicants to file a petition for accelerated examination to expedite prosecution. Compliant applications often result in a final disposition within one year. While the fees associated with a petition for accelerated examination are notably less than those associated with a Track One request, to qualify for the accelerated examination program, the application must contain three or fewer independent claims and no more than 20 claims total, and the applicant must conduct a pre-examination search and provide an accelerated examination support document.
Qualified applicants may receive prioritized examination based on a showing that a state of health of the applicant is such that she or he might not be available to assist during prosecution if it were to run its normal course, or the applicant is 65 years of age or older. While there is no fee required for such a petition, interested applicants should be aware that personal/medical information that is submitted as evidence to support such a petition may be made public if the submission does not comply with the procedures for submitting trade secret, proprietary, and/or protective order materials.
The Patents 4 Patients Program permits patent applications pertaining to cancer immunotherapy to be advanced out of turn for examination, resulting in accelerated review. No additional fee is required to participate in the Patents 4 Patients Program. Learn more about the Patents for Patients Program here.
37 C.F.R. 1.155 permits an Applicant for a design patent to submit a request for expedited examination. To qualify for expedited examination, the Applicant must have completed a pre-examination search, the application must include drawings in compliance with the USPTO drawing standards (or, for international design applications, published pursuant Hague Agreement Article 10(3)), and the design application must be accompanied by a request and additional fees. In some instances, design applications submitted with a request for expedited examination may receive a first office action in as little as five months.
Under the Full First Action Interview Pilot Program Applicants are afforded an opportunity to speak with an Examiner regarding the merits of a patent application before receiving a first Office Action. Participants in the program receive a Pre-Interview Communication that provides the results of a prior art search performed by the Examiner. Upon receipt of the Communication, the Applicant must schedule an interview and submit an amendment or remarks, or file a request to forgo the interview. If an agreement as to the allowability of each claim is not reached during the interview, the Applicant will receive a First Action Interview Office Action that sets a period of response to one month or thirty days (whichever is longer).
Aside from the Full First Action Interview Pilot Program, Applicants may request an interview with an Examiner at any point during prosecution. However, interviews requested before the receipt of a first office action or after the receipt of a final office action may be denied at the discretion of the Examiner. Interviews may be conducted remotely or in-person at the patent office and offer the Applicant an opportunity to explain their invention verbally. Models of the invention may be demonstrated during an interview and may help an Applicant advance his or her application if it relates to an esoteric technology.
The QPIDS program eliminates the requirement of filing a Request for Continued Examination (RCE) with an Information Disclosure Statement (IDS) after payment of the issue fee for the IDS to be considered. Pursuant to QPIDS program, the examiner will review the IDS submission before determining if prosecution should be re-opened. If the Examiner determines that the IDS does not require re-opening prosecution, the application will proceed to issue. To be eligible for the QPIDS program, the issue fee must have been paid and the application must not yet have issued.