By Wayne Caroll, Inspired Idea Solutions
Accelerated examination of patents is a process that allows applicants to have their patent applications reviewed and granted at a much faster pace than regular examination. This process is highly beneficial for those who want to get their patents granted quickly and start commercializing their inventions. In this article, we will answer some of the most common questions about accelerated examination of patents.
1. How much faster is accelerated examination of patents compared to regular examination?
On the United States Patent and Trademark Office website, they have a dashboard for patents showing current average times for examination. The accelerated examination process is significantly faster than regular examination. The current average in 2023 is about 7.2 months from the filing date to receive a “final disposition” on a patent application through accelerated examination, while regular examination has an average of 25.3 months. This is due to the fact that accelerated examination prioritizes the review of patent applications. There are two programs to expedite the application process:
The Track One expedited application takes on average 2.1 months to grant the petition to expedite, and then on average 2 months for a first examination by the Patent Office, for a total of 4.1 months to the first examination by the Patent Office. The average time to a final disposition is 7.2 months from filing. This is compared to non-expedited applications that take 16.9 months on average to receive a first office action, and 25.3 months to final disposition.
There is another petition program to expedite a patent application based on age, if one or more inventors are 65 years of age or older, or if the inventor is in poor health. This petition does not require a fee paid to the Patent Office, and is typically granted in less than 2 months, with 95% of all petitions granted for petitions based on age. If this petition is filed through the E-petition program it is granted 100% of the time the same day the application is filed. The examination time frame under this program is similar to the Track One program.
2. What are the criteria for a patent to be eligible for accelerated examination?
To be eligible for accelerated examination, a patent application must meet certain criteria. There are different requirements for the two programs, Track One, and Age or Health.
A Track One application must be filed electronically with an extra filing fee. The petition to enter the Track One program must be filed with the patent at the time of filing the patent. There is a limit of 4 independent claims and 30 total claims.
Program based on age or poor health
For Age or health, at least one inventor must be 65 years of age or older, or in poor health. The petition based on age or health does not need to be filed with the initial filing, and there is no filing fee.
3. Can accelerated examination of patents lead to a higher chance of rejection?
There is no evidence to suggest that accelerated examination leads to a higher chance of rejection.
Track One filings actually have a higher rate of allowance. There are many possible reasons for this, and there might not be a direct correlation. By expediting an application, an entrepreneur or business is able to stay focused on the patent process and the product until the patent is granted. There are a lot of patents that are not granted because the inventors or owners decided not to respond to rejections for various reasons, including that the business is no longer focused on the invention. Also check the utility model registration guide.
In my experience, accelerated patents are directed to experienced patent examiners who don’t need supervision or training to complete examination of the patent. More experienced examiners are often more confident in a decision to allow a patent, compared to a newly hired examiner, because the experienced examiner knows that they have properly examined the patent application.
The US Patent Office has a goal to complete the accelerated examination process in 12 months or less from the filing date to receive a final decision. However, this timeline can vary depending on the complexity of the application and the workload of the examiner.
Yes, there are additional fees associated with accelerated examination of patents. The current fee for requesting accelerated examination with the required processing fee is $4,340 for large entities, $1,736 for small entities, and $868 for micro entities. These fees are in addition to the regular filing fees for patent applications. Large entities are those with more than 500 employees, while small entities have fewer than 500 employees and are not affiliated with a large entity. Micro entities are those with no more than 4 prior filed non-provisional patent applications and have a gross income less than three times the median household income from their prior year tax filing. As of September 12, 2023 the limit is $223,740.
6. How does accelerated examination of patents affect patent infringement lawsuits?
Accelerated patent examination doesn’t impact infringement lawsuits directly. A granted patent is necessary for filing a lawsuit, and during the patent process, enforcing it can be challenging. Most patents receive at least one rejection, requiring discussions with the Patent Office and written arguments that could be used against the patent owner in court. Accelerated examination reduces back-and-forth with the Patent Office, as experienced examiners are more comfortable with allowing patents with less discussion. It may also save money, as the program’s goal is to expedite the process within a year. A patent is pending until the Patent Office approves the claims and technical requirements for patents, and gives you the Notice of Allowance. Once granted, it’s harder for infringers to invalidate the patent. But while it’s pending, you can file another patent application, where you can amend the claims and make them focus in a different area or even broader claims. Patent litigation is intense and quite expensive, and infringers will try to invalidate the patent by taking it back to the Patent Office. The process involves presenting evidence and arguments from both sides.
Accelerated examination can be used to obtain additional patent rights, which can help strengthen a patent holder’s case and bargaining position in a lawsuit.
7. When is it better to proceed with accelerated examination of patents?
It is generally better to proceed with accelerated examination of patents when there is a need to obtain a granted patent quickly. This may be the case for inventors or companies that want to start commercializing their inventions as soon as possible. Additionally, accelerated examination may be useful in situations where there is a risk of infringement by competitors.
In conclusion, accelerated examination of patents is a useful tool for those who want to get their patents granted quickly. It is important to ensure that the application meets the eligibility criteria and is well-written before submitting it for accelerated examination. While there are additional fees associated with Track One accelerated examination, it can provide a significant advantage for inventors and companies who want to start commercializing their inventions as soon as possible.
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