How to Expedite Your Patent Examination at the USPTO

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What’s the Normal Process?

Once you’ve filed your utility patent application at the US Patent & Trademark Office (USPTO), it’s natural to wonder how long it will take before you hear back.

It turns out you won’t hear anything at all for about 17 months, on average. Considering the vast majority of applications are rejected at first, it’s quite likely you will receive a formal rejection of your patent claims about 16 to 18 months after you file. That kicks off a back-and-forth with the Patent Office, as your patent attorney argues, amends, and makes corrections to overcome the rejection. Overall, the standard US examination process takes more than two and a half years to complete. (In any given case, these numbers can be significantly higher.)

Can the Process Be Expedited?

Unsurprisingly, people often ask how to speed things up. It turns out there are several ways, but most of them require you to qualify in some way for a particular program. For example, you can petition to speed up the process if one of the inventors is at least 65 years old. You might also qualify for the Patent Prosecution Highway (PPH), if a corresponding version of your application has already received favorable treatment elsewhere (e.g., in another country, or during the PCT process). However, most applications won’t fall into either of those categories.

In any event, the most straightforward method for expediting your application at the US Patent Office is to pay for prioritization under the Track One program. Patent applications that are granted Track One status will be examined quickly, with an average first response in 3-6 months, and an overall timeline of 12-18 months. In general, the USPTO says they’ll make sure your application is either allowed or rejected twice within the first 13 months*. To help process, you’re not allowed to extend the deadlines on your own formal responses. Normally, you’re allowed to pay for time extensions, but doing so in a Track One application will cause your application to no longer be “prioritized.”

How Much Does “Track One” Cost?

The official fees for prioritization are $4140 for large entities, $2070 for small entities, and $1035 for micro entities. This is in addition to all other standard filing fees, and any applicable attorney fees.

How Do I Qualify?

You likely qualify for this program if you are filing a nonprovisional utility application (original, continuation, CIP, or divisional). The claims must also meet the following criteria:

  • no more than four independent claims
  • no more than thirty total claims
  • no multiple dependent claims

What Else Should I Know?

  1. Design and Reissue applications are not eligible.
  2. National Phase applications are not eligible. If you have a PCT application you wish to expedite in the US, this can be addressed by filing a bypass application rather than a national stage application. In effect, this is the filing of a standard US continuation application, claiming priority to the PCT application. That continuation can be prioritized.
  3. If you want prioritized status under Track One, your request must be submitted at the time of filing your patent application. You cannot ask to do it later.
  4. The USPTO limits the total number of patent applications under Track One, although it doesn’t appear they’ve ever reached that limit. The current maximum is 12,000 per year.
  5. This program is completely optional, so consider the benefits in your case vs. the additional cost.

Conclusion

If you don’t meet the criteria for other programs that speed up patent prosecution, consider whether it’s worth it to pay for Track One prioritization. It can be a great way to get your patent handled much faster than it otherwise would be. In any case, it’s best to speak with your patent attorney and consider all your options. If you have any questions, one of our patent attorneys would be happy to chat with you. Best of luck!

 

* It’s actually 12 months from granting your request, but that takes about a month.

 

Blog Post © 2020 Kolitch Romano LLP

Photo © 2014 Dave Bourgeau


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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.