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.
Need to expedite your utility patent application? Call US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore options for speeding up your utility patent application.
What is the least expensive way to speed up a utility patent application?
For older inventors, an inexpensive option to speed up your US utility patent application is based on inventor age of 65 years old or older. Inventor age will bump up your application to the head of the line. No USPTO fees are required to make this request.
How do you speed up a utility patent application based on inventor age?
A petition to make special based on inventor age must be filed. If coinventors are involved, only one of the coinventors needs to be at least 65 years old. Our firm typically asks potentially qualified inventors to provide us with evidence of age such as a copy of a birth certificate, driver’s license, or passport.
What are other ways to speed up your patent application?
Inventor age might not be an option for most applicants. You will most likely need to consider more costly options. Here are strategies to speed up a utility patent application:
- Inventor health
- 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
- Patent Prosecution Highway (PPH)
Which options will shorten the wait time for the initial review?
Not all strategies will shorten the initial wait time. For example, PPH might reduce the number of Office Action rejections after examination begins, but it will not shorten the wait time for examination. Initial examination can still take 1.5 to 3 years from the filing date.
Only the following options will move your nonprovisional application ahead in the queue:
- Inventor age
- Inventor health
- Track One
- Accelerated Examination and
- CSP
What is Track One Prioritized Examination?
The Track One option requires low attorney effort, but high USPTO fees. A Track One prioritized examination request must be filed concurrently with the initial filing of the application.
If your nonprovisional application was filed without a Track One request, you cannot make this request in that application. Instead, you can file a continuation application with a Track One request.
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
- Limited to 15,000 applications per fiscal 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.
Does PPH speed up your patent application?
PPH does not shorten the wait time for initial examination. 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.
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.
How to use PCT search results to speed up US patent application
Even if your PCT search report does not indicate allowable claims, you can use this to your advantage. The search report contains valuable prior art information that your patent attorney can study to amend the claims in your US patent application. After analyzing the PCT search report, we can draft and file a Preliminary Amendment to revise the US claims to be more allowable over the prior art.
The Preliminary Amendment can be filed with or after the initial filing of the US national stage application. If the US national stage application was filed before the PCT search report was issued, you might hopefully have time to file a Preliminary Amendment in the US application 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. This request to expedite can be filed with or after the initial filing of a US design patent applciation.
Need to speed up your patent application?
Reach out to US patent attorney Vic Lin by email or call (949) 223-9623 to see how we might help you get your utility patent granted sooner.
