Originally posted 2019-03-11 5:57:17
By Irina Pomestchenko | www.amdlawgroup.com
The patent prosecution is a lengthy process and as a regular practice, the USPTO considers patent applications in the order they are filed. Based on the USPTO statistics, as of December 2018, there were 546,792 unexamined patent applications and the average patent pendency was 23.8 months.
If you are in the highly competitive technology sector where fast rights acquisition is critical, you may not be able to afford to wait that long to get a patent. Fast rights acquisition can benefit your business in various ways and in some instances could be vital.
Let’s say you have a competitor who is infringing upon your product of technology. Once the patent is filed, it is pending and you can and should include “patent pending” note and all your sold or exhibited products and marketing materials. The American Inventors Protection Act (AIPA) of 1999 granted patent pending infringement protection. However, you can sue the infringing party for damages only after the patent becomes enforceable after it’s grant date. Therefore, if you have an infringer or unfriendly competitor breathing down your neck, the fast rights acquisition is critical. Granted patent rights also allow you to attract investments and leverage your licensing agreements more efficiently.
There are several approaches you can exploit to get faster to the finish line.
The first and the oldest one is the Petition to Make Special. On August 25, 2006, the USPTO implemented a revised provision for Petition to Make Special procedures and introduced the Accelerated Examination program. All non-reissue utility (including continuing applications) and design applications filed on or thereafter this date are eligible to participate. Since then all Petitions to Make Special except ones based on applicants age, health or participation in the Patent Prosecution Highway (PPH) pilot program (discussed below) are required to comply with the requirements for Petitions to Make Special under the Accelerated Examination program.
Petitions to Make Special based on applicants age (over 65) or illness do not have to comply with the accelerated examination program requirements and will be granted automatically upon providing proof of eligibility.
The objective of the Accelerated Examination (AE) program is to complete the examination of an application and give the applicant the final patentability decision within twelve months from the filing date. However, in certain circumstances, it may take longer and the failure to meet this goal by USPTO is neither petitionable nor appealable.
Upon satisfying all requirements of accelerated examination program, petition to make special will be granted for free if the subject matter of the application is materially contributing to one of the following: development or conservation of energy resources, enhancement of the quality of the environment or countering terrorism. In such instances, the applying party has to provide a statement which explains how exactly invention materially contributes to one of the above categories in support of the petition. The “materiality” of the contribution must be solid and obvious, not hypothetical.
On the other hand, if the invention is directed to other areas, the Petition to Make Special under Accelerated Examination program still can be filed. However, a fee has to be paid to file the petition and all requirements for accelerated examination status must be still met.
The Accelerated Examination fee ($140 regular, $70 small entity and $35 micro entity) is rather modest. However, the requirements for obtaining accelerated examination status are plentiful [MPEP 708.02(a)] and very challenging to satisfy. The restriction on the number of claims (not more than 3 independent claims, 20 total claims, and no multiple dependent claims), interview, pre-examination search document, and accelerated examination support document (AESD) are among such. Basically, the inventive party has to conduct its own prior art search and examination. On the long run, the information provided in AESD by an applicant may be used against the applicant if the validity of the patent gets challenged by the Patent Trial and Appeal Board. Therefore, even though getting ahead of the line through the Petition to Make Special under the Accelerated Examination program could appear attractive, in practice, this approach may not be always beneficial. Based on the USPTO statistics, the number of granted petitions under that accelerated examination program was steadily declining, with only 32 petitions granted in 2015, and the AE program itself may be phased out completely in future in lieu of more popular Prioritized Examination program (a.k.a. Track I).
In the Notice in Federal Register published on 08/16/2016, USPTO states that “Since the implementation of Track I in 2011, the USPTO has received fewer than 200 Accelerated Examination requests annually. In view of the relatively low usage of the AE program, USPTO plans to publish a request for comments in the Federal Register to seek public input on whether there is a value in retaining AE program in view of more popular Track I (Prioritized Examination) program”.
Alternatively, to participating in the Accelerated Examination Program applicants for a design patent may choose to participate in the Expedited Examination program. This program is also available for international design applications designating the United States that have been published pursuant to Hague Agreement Article 10(3). [refer MPEP 1504.30 for more details]
The second and most popular option to advance your application out of turn is Prioritized Examination, also referred to as Track I. It was introduced by the Leahy-Smith America Invents Act (AIA) and is available at the time of filing to any non-reissue utility (including continuing applications) or plant application filed on or after September 26, 2011.
A single request for prioritized examination can be also granted for Request for Continuing Examination (RCE) in a plant or utility application including an application that had entered U.S. national stage from Prior-Filed International (PCT) application. This type of Prioritized Examination is referred to as “Prioritized Examination for Requests for Continued Examination” or PE-RCE. [MPEP 708.02(b)]
Since its implementation, the Track I Prioritized Examination Program is rapidly gaining popularity. Similarly, to the AE, Track I is aiming to achieve a final deposition within a year. However, for all Track, I application that has received the final deposition in fiscal 2019 year the average pendency from petition grant to final deposition is reported to be 6.9 months. That is fast!
Regardless of rather hefty Track One Prioritized Examination Fee ($4,000 regular, $2,000 small entity and $1,000 for micro entity) and other multiple fees, there are much fewer requirements to meet and neither examination support document nor pre-examination search required. The application must comply with claims restriction (maximum 4 independent, 30 total and 0 multiple dependent claims) and be in condition for examination (see MPEP 708.02 (a) subsection VIII.C).
A downside of this approach is the existing numerical cap of 10,000 granted prioritized examination requests annually, however, PTO may consider raising the cap in the near future due to the high demand of this service. [MPEP 708.02(b)]
Beginning in July 2006, there is a third possibility to accelerate the prosecution through the Patent Prosecution Highway (PPH) programs upon meeting certain criteria. The PPH enables an applicant who receives the positive ruling on the claims from the participating office of one country to request accelerated prosecution of the allowed claims in a pending application at the patent office of another country. This allows the applicant to obtain a patentability decision in the second office more quickly. Thus, if you have already filed an international (PCT application) or foreign application at a participating patent office and at least one of your claims was found allowable, you have a basis for participation in PPH program at the USPTO. In order to participate, you must file a request and the Petition to Make Special under the PPH program before the USPTO begins examining your application. There is no limit on the number of applications admitted to the program per year and continuations are eligible for the program (before the first action is issued). Also, there are no additional fees to participate and normal claim limit (with normal excess claim fees) applies.
There are two PPH programs that are running concurrently at USPTO, Global PPH, and IP5 PPH pilot. These programs are substantially similar, differing only with regard to their respective participating offices. Therefore, an applicant doesn’t need to specify which program is being utilized. Additionally, USPTO has PPH agreements with several intellectual property offices that are not yet included in the Global PPH.
The PPH program will not yield a final deposition as quickly as Track I and Accelerated Examination programs and does not guarantee an allowance and neither to shorten the prosecution time. On average, however, PPH applications have higher allowance rates and shorter pendency periods compared to regular applications. Thus, the possibility of shorter pendency period at no additional cost to the applicant makes PPH route worthwhile.
There are other notable options available to an applicant at no additional fees during various stages of prosecution that may contribute to speeding up the process to some degree:
The First Action Interview Pilot Program was signed on May 6, 2011, and since then had been extended and currently running. It is available to all utility applications in all technology areas. Under this program, an applicant may request an interview prior to the first Office action on the merits. During the interview, an applicant will have an opportunity to reach an agreement with the Examiner on relevant prior art and proposed rejections and objections and discuss possible amendments. The effective communication with the examiner during the interview is critical and reached agreement may facilitate earlier allowance.
The After Final Consideration Pilot 2.0, (AFCP) program currently has been extended through September 30, 2019. This program intends to facilitate communication between Examiner and applicant after Final Rejection. If you are planning to file response to a Final Rejection that you believe will place your application in the condition for allowance with limited further effort from the Examiner in terms of search and consideration, you may request to consider your response to the final Office Action under AFCP 2.0.
The Quick Path Information Disclosure Statement (QPIDS) program is part of the USPTO’s on-going efforts towards compact prosecution and pendency reduction. The QPIDS program is fully implemented on a permanent basis. QUIDS allows an applicant to submit an Information Disclosure Statement after the issue fee had been paid (but before the patent actually issues) without filing Request for Continued Examination (RCE). The RCE fee under 37 CFR 1.17(e) and the IDS fee under 37 CFR 1.17(p) are required with a QPIDS submission as well as the petition fee under 37 CFR 1.17(h) for a petition to withdraw an application from issue under 37 CFR 1.313. However, if the Examiner determines that no item of information in the IDS necessitates reopening prosecution, the IDS and RCE fees will be automatically returned.
In summary, there are four major approaches that can be exploited to advance the prosecution at USPTO: Petition to Make Special (illness or age only), Petition to make Special under Accelerated Examination program, Prioritized Examination (Track I) and Patent Prosecution Highway. Additionally, there are several programs that may be helpful to speed up certain stages of the prosecution process. This article represents an only general overview of the existing programs. Each program has multiple filing and eligibility requirements. The laws and application process may be complicated and right approach shall be selected on the case-by-case basis. We welcome you to contact AMD Law Group for additional information and further assistance.
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