Strategies for Expediting the Patenting Process
- Winter 2016 (snippets)
- Snippets
Intellectual property protection, particularly patent protection, is important for many companies, and the ability to speed up the patenting process may be essential for a variety of reasons. For instance, one or more issued patents are often a requirement for many startup companies in order to secure investor funding. Furthermore, for some rapidly evolving technologies, such as software and consumer electronics, the product life cycle may be shorter than the pendency of a patent application. Additionally, many companies may need to know if the invention and/or associated product is even patentable in deciding whether to incur certain specific costs, such as foreign filing abroad. However, the U.S. Patent and Trademark Office (USPTO) ordinarily examines patent applications in the order in which they are filed, under the “first come, first served” principle. The average pendency time from filing to issuance or abandonment is approximately 26 months.[1] For reference purposes, the overall allowance rate is 48.4% thus far for fiscal year 2016.[2] Without applicant intervention, the default pendency time thus leaves much room for improvement. This article discusses the expedited patent examination programs that are available through the USPTO, as well as strategies for selecting the best option to fit an applicant’s needs.
The USPTO offers a spectrum of programs that can be used to expedite examination of patent applications, which include Prioritized Examination (PE), Accelerated Examination (AE), the Patent Prosecution Highway (PPH), Petitions to Make Special (PTMS), Full First Action Interviews (FFAI), the After Final Consideration Pilot (AFCP 2.0) program, and the Collaborative Search Pilot (CSP) program.[3] In certain instances, these programs may help to speed up patent examination and reduce overall prosecution costs. However, as discussed in more detail below, each program has requirements and/or limitations that should be considered in deciding which one is best suited to an applicant’s needs.
Prioritized Examination (PE)
Also known as “Track One,” the PE program allows an applicant to reach a final disposition (allowance or final rejection) of their patent application within one year from the filing date.[4] The average pendency of a PE application is 6.5 months from the date the petition requesting Track One status is granted to the final disposition of the application—a significant reduction from the typical 26-month pendency.[5] According to the Patent Office, it takes about 2.1 months from the grant of the petition to the receipt of a first Office action,[6] and applications filed under the PE program have an allowance rate of around 44%.[7] From our experience, it seems that patent examiners are willing to grant multiple interviews and make examiner’s amendments in order to expedite the examination to a final disposition. These efforts can reduce the number of Office actions, which in turn can reduce prosecution costs.
Another advantage of the PE program is that it provides an application special status with fewer requirements compared to the current AE program discussed below. A request for examination under the PE program must accompany the application at the time of filing or can be included with a Request for Continued Examination (RCE).
For fiscal year 2016, the Patent Office fee to file a PE petition for a large entity is $4000, which is in addition to the $140 processing fee and the typical $1600 application filing fees.[8] The application must be filed electronically and must meet all the requirements under 37 CFR 1.51(b) at the time of filing.[9] Furthermore, the application is limited to four or fewer independent claims and 30 or fewer total claims. Multiple dependent claims cannot be present in the application.
The main drawback of the PE program is the upfront filing fees. However, cost savings due to the reduction in subsequent prosecution costs can offset at least a portion of the filing fees.[10] Another issue in the PE program is the USPTO’s strict emphasis on prompt responses. Failure to timely reply to an Office action can result in the application being removed from the PE program and placed on the examiner’s regular prosecution docket. Moreover, if the applicant amends the claims to include more than four independent claims, more than 30 claims, or any multiple dependent claims, the application’s prioritized status will likewise be terminated.[11]
For reasons that will become apparent below, the PE program is now the most popular option used by applicants to accelerate the examination of their applications. It is also particularly useful for applicants that are willing to pursue relatively narrow claims designed to protect a specific product or process.
Accelerated Examination (AE)
Like the PE program, the AE program also allows an applicant to reach a final disposition (allowance or final rejection) within one year from the filing date.[12] The average pendency time of an AE application is 9.26 months from the date the petition is granted to the final disposition of the application.[13] Applications filed under the AE program have an allowance rate of around 64%. [14] However, unlike PE, there are a number of burdensome requirements associated with the AE program.
As a requirement for acceptance under the AE program, the applicant must supply a pre-examination search report and an accelerated examination support document with the application at the time of filing.[15] The support document is like an Office action but is written by the applicant, and accordingly may be more likely to create prosecution history estoppel or inequitable conduct issues. Furthermore, while the fees for filing under the AE program are nominal, conducting a patentability search and preparing the search report and support document can be an expensive endeavor, depending on prior art search costs and the extent of prior art that needs to be reviewed and analyzed and compared to the claims. Finally, unlike the PE program, which follows standard examiner interview procedures, an examiner interview is required under the AE program, which may add to the total cost.[16]
For fiscal year 2016, the fee to file an AE Petition for a large entity is $140, in addition to the standard $1600 application filing fees.[17] The application must be filed electronically and must meet all the requirements under 37 CFR 1.51(b) at the time of filing. Furthermore, the application is limited to three or fewer independent claims and 20 or fewer total claims, and multiple dependent claims cannot be present.
The main drawbacks of the AE program is the burdensome search and support documents required, and the potential estoppel issues created with the submission of these documents. An applicant should therefore evaluate the risk of such submissions before proceeding with the AE program. Another issue with the AE program is the USPTO’s strict emphasis on prompt responses. Failure to timely reply to an Office action can result in the application being removed from the AE program and placed on the Examiner’s regular prosecution docket.
Since the introduction of the PE program, the AE program has waned significantly in popularity because of its burdensome search/support document requirements and associated risk of creating estoppel issues.[18] However, despite the costs involved in preparing the search/report documents, AE examination may lead to lower overall costs in some instances. For instance, the process of preparing the documents may lead the Applicant to pursue relatively narrow claims that in turn may reduce overall prosecution costs relative to the PE program.[19]
Patent Prosecution Highway (PPH)
Through the PPH program, the examination of an applicant’s U.S. application can be expedited under certain conditions by leveraging examination from other jurisdictions.[20] Under the program, if an applicant received an allowance or a favorable search report from a corresponding foreign or PCT application where at least one claim in the application is found patentable, the applicant may request that the USPTO expedite the examination of the U.S. counterpart application.[21] However, the applicant should note that the claims in the counterpart application must sufficiently correspond to the allowable claims in the foreign application.[22]
Unlike the PE and AE programs, there is no set period for reaching final disposition of the application, and a request for accelerated examination under the PPH program may be filed any time after the U.S. application is filed, but before examination begins.[23] The Examiner may rely on the search and examination results from the foreign patent office during examination of the U.S. application.
The average pendency time of a PPH application is 14.2 months from the grant of the PPH petition to the final disposition of the application.[24] The allowance rate of PPH patents at the USPTO is 86.3%—much higher than the average application.[25] Because of the shorter pendency and ability to leverage foreign prosecution, the overall prosecution costs of the U.S. application can be significantly lower. Furthermore, there is no restriction with respect to the number of claims in the application.
There is no fee associated with filing a petition under the PPH program and examination occurs relatively quickly. A first Office action can be expected within about 3 months from the date of petition grant.[26] While the PPH program is useful for expediting examination of applications, it is only available to applicants who have filed a PCT or other foreign application, and only after the applicant has received a notice of patentable subject matter in at least one PCT or other foreign claim. Companies that routinely file PCT applications are a class of applicants that particularly stand to benefit from the PPH program.
Petitions to Make Special (PTMS)
After the USPTO revised the procedures for expediting applications, the only PTMSs that are not within the scope of another program listed in this article, are those based on applicant’s poor health or advanced age. The PTMS program based on the applicant’s health or age can move an application to the top of the examination queue without payment of a fee or any other additional submissions, such as the search/report documents under the AE program.[27] Other PTMSs (i.e., based on manufacture, infringement, environmental quality, energy, recombinant DNA, superconductivity materials, HIV/AIDS and cancer, countering terrorism, and biotechnology applications filed by small entities) will be processed using the revised procedure for accelerated examination discussed above.[28]
Unlike the PE and AE programs, there is no set period for reaching a final disposition of the application. However, a request for PTMS must accompany an application at the time of filing. For RCEs, the request can be filed with the RCE or after the RCE is filed. The average pendency time of a PTMS application is 9.26 months from the date the request is granted to the final disposition of the application.[29]
Unless an attorney inquires about the age and/or health of the inventors, it is easy for qualified applicants to overlook the opportunity to have their applications given special status without paying separate filing fees.
Full First Action Interview (FFAI) Program
Unlike PE and AE programs, the FFAI program is not a true expedited program in that no special priority is granted. However, FFAI allows applicants more opportunities to communicate with the Examiner compared to regular examination, which, in turn, may reduce the pendency time and facilitate possible early allowance.
There are no fees associated with participating in the FFAI program; however, the program limits the total claims to 20 with no more than three independent claims.[30] For applications filed under the FFAI, the pendency and number of Office actions issued are commonly reduced and the allowance rate is greater. Although limited statistics directly corresponding to this program are published by the USPTO, the benefits of the program are evident from its First Action Allowance Rate, which is the number of applications determined to be patent eligible upon first review. In FFAI cases, the first action allowance rate is 29.6% while the average for all patent applications before the USPTO is much lower at 11.9%.[31]
A request to participate in the FFAI program can be submitted at any time before a substantive Office action is issued.[32] Under the FFAI, the Examiner conducts a prior art search and provides the applicant with a pre-interview communication to outline potential claim rejections. The applicant then has one month to schedule a first Office action interview. After the interview, the Examiner can either allow the claims or issue a first Office action, after which prosecution proceeds as normal.[33]
For applicants looking to avoid the high costs of PE, and who are willing to reduce and focus their claims, the FFAI program may be a good way to expedite their applications.
After Final Consideration Pilot Program (AFCP 2.0)
Like the FFAI program, the AFCP 2.0 is not a true expedited program in that no expedited final disposition is granted. However, the AFCP 2.0 gives examiners additional time to consider responses after a final rejection and to conduct interviews with applicants.
There are no fees associated with filing a request to participate under the AFCP 2.0 program, nor are there claim number restrictions. However, there must be an amendment narrowing at least one independent claim.[34] If the amendments are straightforward, allowance can be expected in many instances. However, if the amendment is extensive and/or raises new issues that cannot be addressed by the Examiner within the limited time allotted under the program, the applicant may need to file an RCE with fees to continue prosecution.[35]
For all applicants faced with a final rejection disposition, the AFCP 2.0 program provides an applicant with an opportunity to receive an allowance without resorting immediately to the filing of an RCE, thus potentially shortening pendency and obtaining a cost saving.
Collaborative Search Pilot (CSP) Program
The USPTO also has two relatively new collaborative search programs, one with the Japan Patent Office (JPO) and another with the Korean Intellectual Property Office (KIPO).[36] Generally, the CSP programs allow sharing of patentability search results between the different Offices. In implementing the CSP program, the USPTO’s procedure is based on the FFAI program and has similar requirements.[37] The general requirements to participate in the CSP program include a claim limit of three independent claims and twenty total claims, the claims being directed to a single invention, and the claims corresponding between the USPTO and the JPO/KIPO. Further, the earliest priority date of the application must be post-AIA (March 15, 2013), the application must be unexamined in both Offices (i.e., before the USPTO or JPO/KIPO issues a first Office action), and both Offices must grant the petition. Participation in either of the CSP programs results in the application being taken out of turn resulting in receiving expedited search results and reaching final disposition more quickly. As the CSP program has effective dates in August 2015 and September 2015 for the JPO and KIPO respectively, statistics are unavailable at this time.
Conclusion
The USPTO has a number of programs that are aimed at shortening the examination period of patent applications. Two of the programs, PTMS and PPH, are only available in limited situations. The AE program is also available but places a significant burden on applicants and can create a greater estoppel risk. In contrast to the AE program, the PE program provides a patent application special status but with fewer requirements. Despite the high initial upfront filing costs, PE is more widely utilized by applicants. In a comparison between PE, AE, and PPH programs, the fastest allowances were obtained on average for applications filed under the PE program, and PE applications may also be the least expensive to prosecute.[38] For applicants who wish to avoid the initial upfront filing costs of the PE program, the FFAI and AFCP 2.0 programs, separately or in combination, may also be beneficial in expediting the allowance of an application.
[1] See Traditional Total Pendency, USPTO, available here (providing Traditional Average Pendency from filing to final disposition for all applications over the last two fiscal years; this statistic includes the applications filed as part of an expedited program, so the non-expedited average is even greater). See also USPTO’s Performance and Accountability Report for 2015 available at http://www.uspto.gov/sites/default/files/documents/USPTOFY15PAR.pdf.
[2] See Utility, Plant, and Reissue (UPR) Patent Applications Allowed, available at http://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1005 (Similarly to the average pendency, this total statistic includes the expedited applications within the total average.). According to the Performance and Accountability Report for Fiscal Year 2015 (available at http://www.uspto.gov/sites/default/files/documents/USPTOFY15PAR.pdf) the allowance rate of all applications for FY 2015 was approximately 55%).
[3] For a broad helpful timeline detailing expediting initiatives at the USPTO, see USPTO Patent Application Initiatives Timeline, available here.
[4] See USPTO’s Prioritized Patent Examination Program, available at http://www.uspto.gov/patent/initiatives/usptos-prioritized-patent-examination-program.
[5] See Track One Pendency from Petition Grant to Final Disposition, available at http://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1007.
[6] See id.
[7] See Track One Final Dispositions, available at http://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1007.
[8] See Prioritized Examination for Non-Provisional Utility Applications, pages 3-4, available at http://www.uspto.gov/aia_implementation/track-1-quickstart-guide.pdf.
Current schedule of fees is available here (Note: The Small Entity fees are ½ and the Micro Entity fee ¼.).
[9] 37 C.F.R. § 1.102(e). See also Fed. Reg. Vol. 79, No. 83, available at https://www.gpo.gov/fdsys/pkg/FR-2014-03-05/pdf/2014-04806.pdf (Among other updates to the PE rules, the requirements for prioritized examination were amended to permit an applicant to postpone submission of an inventor’s oath and declaration until after the filing date of the application, so long as the application as filed includes an executed application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i).).
[10] Certain fees may/may not be available for refunds. See Prioritized Patent Examination FAQs, available at: http://www.uspto.gov/patents/init_events/track1_FAQS.jsp (Only the Track One prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The Track One processing fee, set forth in 37 CFR 1.17(i), will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d).
[11] 37 C.F.R. § 1.102(e). The prioritized examination program grants special status until one of the following occurs: i. Applicant files a petition for extension of time to extend the time period for filing a reply; ii. Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim; iii. Applicant files a request for continued examination (RCE); iv. Applicant files a notice of appeal; v. Applicant files a request for suspension of action; vi. A notice of allowance is mailed; vii. A final Office action is mailed; viii. The application is abandoned; or ix. Examination is completed as defined in 37 CFR 41.102. See also Prioritized Patent Examination FAQs, available at: http://www.uspto.gov/patents/init_events/track1_FAQS.jsp.
[12] See generally Accelerated Examination, available at http://www.uspto.gov/patent/initiatives/accelerated-examination.
[13] See Pendency from Filing and PTMS Decision (May 29, 2015), available at http://www.uspto.gov/patent/initiatives/accelerated-examination (Average pendency from filing to disposition was 12.58 months for FY 2015).
[14] See Accelerated Exam Statistics, USPTO (last updated April 2012) available here.
[15] See Part I: Requirements for petitions to make special under accelerated examination, Guidelines for Applicants under the New Accelerated Examination Procedure, available here.
[16] See id.
[17] See generally Patent Application Filing Fees, available here.
[18] For a detailed comparison and discussion of Prioritized Examination vs. Accelerated Examination, see Michael Anderson & Michael Clifford, Accelerated Examination v. Prioritized Examination, Snippets Volume 10, Issue 1 (Winter 2012), available here.
[19] A general note on AE procedure: the petition for AE is a Petition to Make Special (PTMS) under MPEP § 708.02 and all PTMSs except those based on an applicant’s health, age or the PPH program are required to comply with the requirements for a PTMS under AE. For example petitions to make special base on manufacture, infringement, environmental quality, energy recombinant DNA, superconductivity materials, HIV/AIDS and cancer, countering terrorism, and biotechnology applications filed by small entities, will be processed under the AE program. Applicants that file a PTMS based on health, age, or the PPH are not required to fulfill the AE program requirements.
[20] Global and IP5 PPH includes Australia (IPAU), Austria (APO), Canada (CIPO), China (SIPO), Denmark (DKPTO), Estonia (EPA), European (EPO), Finland (NBPR), Germany (DPMA), Hungary (HIPO), Iceland (IPO), Israel (ILPO), Japan (JPO), Korea (KIPO), Nordic (NPI), Norway (NIPO), Portugal (INPI), Russia (ROSPATENT), Singapore (IPOS), Spain (IPAU), Sweden (PRV), United Kingdom (UKIPO), and the United States (USPTO). In addition to the Global PPH and IP5 PPH pilot programs, the USPTO has PPH agreements with the following Intellectual Property Offices around the world: Brazil, Colombia, Czech Republic, Mexico, Nicaragua, Philippines, Poland, Romania and Taiwan. See here. For more information about Foreign Patent Strategy including additional details about PPH see Tips for Developing a Cost-Effective Foreign Patent Strategy, Snippets Vol. 13, Issue 1 (Winter 2015), available here.
[21] See generally Patent Prosecution Highway (PPH) – Fast Track Examination of Applicants, available here.
[22] See USPTO’s PPH FAQs, August 2015, available here.
[23] See id.
[24] See PPH Statistical Data, available at http://www.jpo.go.jp/ppph-portal/statistics.htm.
[25] See id.
[26] See id.
27 For more details on PTMS, see also Accelerated Examination available at
http://www.uspto.gov/patent/initiatives/accelerated-examination.
[28] See id.
[29] See Pendency from Filing and PTMS Decision (May 29, 2015), available at http://www.uspto.gov/patent/initiatives/accelerated-examination.
[30] See III. Requirements, Full First Action Interview Pilot Program Notice, available at http://www.uspto.gov/web/offices/com/sol/og/2011/week23/TOC.htm#ref11.
[31] See First Action Allowance Rate – First Action Interview Pilot cases vs. all new cases, available at http://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1007.
[32] See Frequently Asked Questions Regarding the First Action Interview Pilot Program, May 2011, available at http://www.uspto.gov/sites/default/files/patents/init_events/faipp_full_faqs.pdf.
[33] See Full First Action Interview Pilot Program: Overview, available at http://www.uspto.gov/sites/default/files/patents/init_events/faipp_full_overview.ppt.
[34] 37 C.F.R. § 1.116(b)
[35] See generally 37 C.F.R. § 1.116(b) and 78 Fed. Reg. 29117.
[36] See generally Collaborative Search Pilot Program (CSP), USPTO, available here.
[37] Details of the CSP Program may be found here: http://www.uspto.gov/sites/default/files/documents/GeneralCSPInfo.pdf.
[38] Max Colice et al., Expediting Prosecution: Comparing Track 1 Prioritized Examination, Accelerated Examination, the Patent Prosecution Highway, and Petitions to Make Special Based on Age, available at http://patentlyo.com/patent/2012/12/expediting-prosecution-.html.
© 2016 McDonnell Boehnen Hulbert & Berghoff LLP
snippets is a trademark of McDonnell Boehnen Hulbert & Berghoff LLP. All rights reserved. The information contained in this newsletter reflects the understanding and opinions of the author(s) and is provided to you for informational purposes only. It is not intended to and does not represent legal advice. MBHB LLP does not intend to create an attorney–client relationship by providing this information to you. The information in this publication is not a substitute for obtaining legal advice from an attorney licensed in your particular state. snippets may be considered attorney advertising in some states.
