Fast Tracking An Application In The U.S. Patent And Trademark Office (4 of 4) – Patent Prosecution Highway

This is the fourth post of a four part series on fast tracking prosecution through the US Patent Office. This post is focused on the Patent Prosecution Highway (PPH). The Patent Prosecution Highway program requires an applicant to file a Patent Cooperation Treaty (PCT) application or a foreign application and wait for a favorable decision to be made by another patent office before filing a PPH request in the U.S. Patent and Trademark Office. That is, this program allows an applicant to file a request to enter the program only if another patent office participating in the PPH program has found at least one of the applicant’s claims to be allowable.

As far as timing, an applicant should expect to receive a first Office Action on the merits within a couple of months from the grant of the PPH request. The overall allowance rate for PPH applications is much higher than a regular application, at about 84 percent as opposed to around 53 percent for regular applications.

The PPH program does not cost more than a regular application, and the prosecution process itself is largely the same as standard application prosecution. No examination support documents are required, and normal Examiner interview practice is maintained. There is also no limit to the number of applications admitted each fiscal year into the program. Continuation applications are eligible for the program until the first Office Action has been issued, but applications filed with RCEs are not eligible.

Fast Tracking An Application In The U.S. Patent And Trademark Office (3 of 4) – First Action Interview Program

This is the third article of a four part series on fast tracking prosecution through the US Patent Office, focusing of the First Action Interview program. In contrast to a Track 1 application, the First Action Interview program requires no extra fee, thus making it an appealing process to expedite examination.  Under the First Action Interview program, the examiner performs an initial search prior to any office action, and if the examiner determines that the claims are not yet allowable then a brief Pre-Interview Communication is completed that identifies particular references and rejection types. The applicant then conducts a first action interview with the patent examiner after reviewing the Pre-Interview Communication. That is, rather than initially receiving a full office action like a typical proceeding, the applicant and the examiner discuss the examiner’s initial findings before any first office action issues.

One benefit of this approach is that if agreement is reached during the first action interview that the patent application is allowable, then the examiner will go ahead and issue a notice of allowability.  However, if agreement is not able to be reached during the initial interview, the examiner may enter a First Action Interview Office Action which summarizes all rejections and objections along with the interview.  Alternatively, the applicant may request a waiver of the First Action Interview Office Action and instead submit a proposed amendment to address any issues identified by the examiner. Examination of the application then continues as it would for according to standard practice for a typical application.

There are several requirements to pursue a First Action Interview. First, there is a limit to the number of claims that may be filed. Specifically, an application must contain 3 or fewer independent claims and 20 or fewer total claims. Furthermore, a request to participate in the program must be filed at least 1 day before a first office action on the merits is entered.

There is not much currently information as to how much faster overall prosecution is under this program compared to normal application filings, however some evidence suggests that an allowance midpoint was reached approximately 5 months faster. Thus, it can be assumed that this program is slower than the Track 1 allowance program. There is evidence that the First Action Allowance rate is much higher than normal applications, at approximately twice the level of normal noncontinuing applications.


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.