Fast Tracking An Application In The U.S. Patent And Trademark Office (2 of 4) – Accelerated Examination

This is the second article of a four part series on fast tracking prosecution through the US Patent Office, focusing on the Accelerated Examination program, you can find part one on Track One prosecution here. Accelerated Examination requires filing a petition (similar to Track One), and applicants can also typically receive a final disposition within one year. The statistics on the speed of prosecution are impressive, the average time from a Petition allowance to a final disposition was approximately 9 months in 2015 . The program guarantees a first Office Action in less than 5 months, and final disposition within 12 months. The cost is quite a bit less than the Track One program, requiring just a $140 petition fee (and even less for small and micro entities).

In contrast to the Track One program, required documents include preexamination search documents and an examination support document prepared by the applicant. That is, the applicant is required to conduct a prior art search against its own application and prepare an examination support document explaining how each of the applicant’s claims is patentable over the identified references. In addition to the preexamination search documents and examination support document, an examiner interview is required before the examiner issues a first Office Action.

The required preexamination search documents and an examination support document mean that applicant’s utilizing the program are required to characterize their own claims on the record. This creates an additional burden for the applicant on the front end. However, this procedure may actually be advantageous to the applicant in the long term because applicant has greater clarity going into the prosecution which may lead to an increased likelihood of success. Because the applicant must conduct the prior art search and prepare the examination support document prior to prosecution, the applicant may ultimately decide not to proceed with a costly prosecution which was ultimately doomed to failure.

There are also some additional requirements for the Accelerated Examination program.  The application is limited to 3 independent claims and no more than 20 total claims with no multiple dependent claims.  Another difference  from Track One is that applications filed with RCEs are not eligible for the program. However, Continuation applications are eligible.  There is also no limit on the number of applications admitted to accelerated examination each fiscal year, whereas Track One is limited to 10,000.


Fast tracking an application in the U.S. Patent and Trademark Office (1 of 4) – Track One Examination

There are a variety of options for applicants to accelerate their patent application at the U.S. Patent and Trademark Office.  This is the first in a series of four posts examining how to speed up the examination of a patent application; each post is directed towards a different option at the USPTO. This post is focused on the Track One Examination.

Track One Examination

Track One examination permits an applicant to pay for faster examination and get a final disposition usually in less than one year from the time Track One status is granted, as compared to regular examination which usually takes two to four years.   On average, an applicant receives an initial office action within 4 months and final within 8 months. This final disposition can be a Notice of Allowance, a Final Rejection, or a Notice of Abandonment.

The biggest benefit of Track One is the rapid prosecution process.  The quick time frame in getting a patent allowed allows for greater certainty in raising funds, marketing a product, or commercializing and taking a product to market.  Using such a process, a startup could rapidly develop a patent portfolio while seeking investors.

There are multiple requirements for Track One, including an extra filing fee. The filing fee is currently $4,000 (or $2,000 for a small entity), and is charged in addition to the normal filing, search, publication, and examination fees.  Track One also limits the number of claims in an application to 4 independent claims and 30 claims in total.

It is important to note that a limited number of 10,000 applications are allowed into the program each fiscal year, so in the future it is possible that Track One will not be available for a given application.  However, between April 2016 and March 2017 9,382 Track One applications were registered.

The prosecution process itself is largely unchanged from a standard application prosecution. No extra examination materials are required, and the standard Examiner interview practice is in practice.