written by Susanne Somersalo, Ph.D., Esq., patent attorney at Gearhart Law
How to expedite patent prosecution?
According to the USPTO statistics of November 2013 there were 590,070 patent applications waiting to get examined in the U.S. Patent and Trademark Office. The expected time from filing of a patent application to the first office action is on average 17.6 months. On average the total time of examination is 37.3 months.
The total time depends a lot on the art unit the application belongs to. Some units are very fast and clearly below the average. In any case, the inventor most probably has to wait around a year before an office action is issued and most probably two to three years before the application may become issued.
Thus it seems that the patenting process is sometimes painfully slow. In order to provide faster examination, the USPTO has established alternatives for expedited prosecution.
Track One examination is a relatively new process. For an additional fee, the applicant gets an expedited examination. The fee is currently $2000 for an applicant who qualifies as a small entity.
In order to get an application onto Track One, the application may not have more than 30 claims, no more than 4 independent claims and no multiple dependent claims. An essential feature in Track One examination is that the applicant can keep the expedited status only if all office actions are replied to within the set time frame: if the applicant requests an extension of time to reply he will automatically lose the expedited status.
Track one may seem to be expensive, but it expedites the process tremendously. The average time for first office action is 2.4 months and the total prosecution time is on average 6.13 months. Thus it is possible to get a patent in about half a year.
However, it has to be noticed that Track One does not increase the chances of getting the patent issued. The average allowance rate of patents in the U.S. Patent and Trademark Office is about 43%. Track One applications have about the same rate.
Patent Prosecution Highway
Another way to expedite the patent examination process is to use the Patent Prosecution Highway (PPH) when possible. PPH is possible and definitely worthwhile to consider when an application that is substantially similar to the US application was filed with certain foreign offices (e.g. European or Japanese Patent Office) or as an international PCT application and the foreign or PCT authority has issued a positive search report. Under the PPH-program the USPTO Examiner would consider the positive search report in his examination of the US application. Of course the US claims have to be substantially same as the PCT –claims.
The PPH-examination is similarly expedited as the Track One, but in addition to this, the allowance rate is currently over 90%. When the international search report is positive, the US Examiner may rely on the international search and basically allow the patent based on the positive international search report.
Inventor over 65 years
Probably not a very well known way to expedite patent application prosecution is to file a petition to expedite the petition when one of the inventors is over 65. There are no additional fees for the expedited process. The first office action usually comes a few months after the petition has been accepted. The expedited process in this case does not increase the allowance rate; it remains at about 43%.
At Gearhart Law we can help you in filing your patent application via normal examination or via an expedited route. Call us at 908-273-0700 to discuss your options or send us an email at email@example.com.