Getting a technology patented to obtain a utility patent granted is a time-consuming process. Presently, the process takes about two years, 24.4 months to be exact, to obtain a patent in the United States when a regular examination is sought for by the Applicants seeking a utility patent. This is an excellent turnaround time for getting a patent granted, as compared to certain other jurisdictions. The USPTO offers for expedited examinations to permit an application to be advanced out of turn if the applicant chooses to do so. A quicker way of prosecuting one’s application is possible if the Applicant opts for either an accelerated examination, a prioritized examination under the AIA or using the PPH
An accelerated examination of the patent application is allowed by the USPTO when a petition is filed by the Applicant under the said program. The petition should generally contain a pre-examination search document and an Accelerated Examination Support document. The search document identifies the field of search, identify the search string/query, and include database searches. The prior art search should cover the relevant groups and the subgroups of the Cooperative patent classification (CPC) while searching the US patents and the published patent applications. The Accelerated Examination Support Document, on the other hand, identifies all the relevant prior art and an explanation of how the invention is patentable. This document is prepared with utmost care, as it boils down to self-examination of the patent by the Applicant and anything argues to delimit the claims essentially becomes estoppel.
Another important aspect while submitting a petition under the Accelerated Examination program is filling out the Information Disclosure statement keenly. The Applicant is mandated to cite any reference, which by itself or in a combination of with any other information establishes that the claims of the invention applied for is not patentable. Accelerated Examination is only performed by the USPTO if the Application possesses three independent claims and has no more than 30 claims. An accelerated examination process puts your application in order for a grant in less than 6 months. Thereby reducing the time to one-fourth of the time it takes to process a utility patent application by regular examination. The fee which is required to be paid in case of an accelerated examination is 140$, 70$ for a small entity and $35 for a micro entity.
A prioritized examination also referred to as a track one was founded under the Leahy-Smith America Invents Act, 2011, simply referred to as AIA Under this program, the Applicant simply has to pay an additional fee to advance an application out of turn. This removes the burden of creating the elaborate search support document and performing elaborate searches. This program allows the patent application to be examined within 12 months of the date of filing, thereby substantially reducing the procurement time. The additional fee that is required to be paid under this program is substantially high as compared to that of Accelerated Examination. It is 4000$ for a large entity, 2000$ for a small entity and $1000 for a micro entity.
Though both the above programs allow for expedited examination of the utility patent applications, there are a number of factors based on which an applicant has to make the choice out of the two or whether to opt for an expedited Examination or not?
- Is the Applicant willing to take the excess costs upfront that is involved in performing the search and in the preparation of the support document? Though The initial filing costs may be high, however, future prosecution costs are limited.
- Is the art/technology fast changing? If it is, then obtaining narrow claims which will be allowed by the USPTO more beneficial as against, the patent becoming redundant by the time it is issued.
- Will the granted patents look good for the investors or whether having a quick portfolio will help you jumpstart your business?
Patent Prosecution Highway
Another form of an expedited examination program offered by the Patent Office is the patent prosecution Highway. The patent prosecution highway allows for expedited examination of foreign patent applications which have been allowed by the first examination office. Therefore, when a foreign patent office has at least allowed one claim of the patent application, that application becomes eligible under the patent prosecution highway for expedited examination. Another prerequisite is that the foreign patent office is required to be a participating office.
We at OutsourceIP are equipped to provide support in the expedited examination process, be it in filling out the Information Disclosure Statements, to performing prior art searches to creating the Accelerated Examination Search document, to proofreading claims, including the review of the file wrapper.