How can you speed up your utility patent application?
The road to getting a US utility patent is often a long and expensive journey. There are ways to speed up patent applications, but some options are easier and cheaper than others. If cost is a major factor, first determine whether your utility application is eligible for an inexpensive option. If time is important, consider the more costly options.
What are inexpensive ways to streamline your utility patent application?
Here are inexpensive options to speed up a US utility patent application:
Note that inventor age will bump up your application to the head of the line. The inventor should send to the patent firm a copy of a birth certificate, driver’s license, passport.
PPH, on the other hand, does not advance a utility application out of turn. While your application may still have average wait time before receiving a first Office Action, a granted PPH request can potentially shorten the examination process afterwards.
What are more costly ways to speed up your patent application?
If the above quick fixes are not available for your utility application, you can speed up a utility patent application by using the following strategies which involve more fees or effort:
- Track One Prioritized Examination (high government fees)
- Accelerated Examination (high attorney’s fees)
- CSP (if co-pending in Japan or S. Korea)
- First file PCT application, and then file US national stage application
Which options will shorten the wait time for the initial review?
Inventor age, Track One, Accelerated Examination and CSP will shorten the wait time for the first Office Action. Other options do not jump ahead in the queue, but may reduce the application timeframe and costs after the first Office Action.
What is Track One Prioritized Examination?
The Track One option requires low attorney effort, but high USPTO fees. Since the Track One prioritized examination request must be filed concurrently with the initial filing of the application, you may need to file a continuation if you’re considering prioritized examination after having already filed a non-provisional application. Here are the pros and cons of the Track One program:
Pros of Prioritized Examination
- No patentability search required (aka pre-examination search report)
- First Office Action within a couple of months of grant of request
- Final disposition (i.e., allowance or final rejection) reached within one year of grant of request
Cons & Limits of Prioritized Examination
- High USPTO fees (large entity: $4,200; small entity: $2,100)
- Limited to 10,000 applications per year
- No more than four independent claims and 30 total claims
- Track One request must be made at initial filing (consider filing a continuation if an application already exists)
- Not available for US national stage applications, but available for US bypass continuing applications
What is Accelerated Examination?
Accelerated Examination requires a low government fee, but significantly more legal work upfront. Grounds for filing a petition for accelerated examination may include:
- enhancing the quality of the environment;
- contributing to the development or conservation of energy resources; or
- countering terrorism.
Pros of Accelerated Examination
- May be filed after initial filing of application
- Low USPTO fees
Cons & Limits of Accelerated Examination
- no more than 3 independent claims and 20 total claims
- requires pre-examination search documents
- requires accelerated examination support document that must include an identification of all limitations in the claims that are disclosed in each prior art reference (can lead to admissions against interest in subsequent litigation due to the applicant previously admitting that certain claim limitations are found in particular prior art references)
For US applicants who cross-file in Japan or S. Korea
Applicants having a US nonprovisional patent application and counterpart application in either Japan (JPO) or South Korea (KIPO) may file a petition for the Collaborative Search Pilot (CSP) program. CSP will accelerate the examination of both the US and counterpart Asian application since each patent office will take the respective application out of turn. While “cutting in line” will shorten the time to the first Office Action, using CSP will likely result in more prior art being cited against your US and JPO/KIPO applications.
How to shorten the patent process wait time
Track One, Accelerated Examination and CSP will shorten the wait time for the first Office Action. A PPH request, if granted, will not shorten the pendency for the first Office Action. However, a granted PPH request might lead to fewer Office Actions overall and a potentially quicker allowance if the Examiner agrees with the earlier favorable decision on the claims.
How to speed up patent process with PCT application
If you filed a PCT application with claims similar to those in your US application, you may be able to benefit from an earlier search report in your PCT application. The international search report in a PCT application is typically issued within 16 months of the priority date or 9 months of the filing date if there is no priority claim. Therefore, the PCT search may often arrive sooner than a first Office Action in a counterpart US nonprovisional application. You can leverage any favorable claim decisions in the PCT search report by filing a PPH request in your US application.
Even if the PCT search report is not favorable, you can use the valuable prior art information in the search report to amend your claims in your US national stage application. One option is to file a US national stage application after receiving the PCT search report, and include a Preliminary Amendment to revise the US claims to be more allowable over the prior art. If the counterpart US application has already been filed by the time you receive the PCT search report, you can file an amendment in the US application hopefully before the USPTO issues the first Office Action.
How to speed up design patent application
You can request the Rocket Docket for a design patent application.
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