US : Prioritized and Accelerated Patent Examination

The common question asked by most of the patent applicant is, how much time will it takes to get a patent on a particular invention? There is no specific answer of this question because the time required for the grant of patent relies upon different variables for example the filing country, the specific area in which the patent is filled, how many independent and dependent claims are there in the application and so on. Still on an average it takes around 2-5 years from the filing to the grant of a patent.

In case if the applicant requires speeding up the patent examination process, few countries offer the option of accelerated examination for the patent application. The United States Patent and Trademark Office (USPTO) is among those few patent offices’s which provide for the multiple option for speeding up the patent examination process.

This Post focuses on the Prioritized and Accelerated examination.

The provisions related to expedited patent review program, i.e. Prioritized Examination (PE) which also referred as Track One is provided in the Leahy-Smith America Invents Act (AIA). Under Prioritized examination process the applicant has to make a request in the prescribed manner with the additional fees of $ 1,000 for micro entity, $2,000 for small entity, $4,000 for non-small entity. In return for which the particular application will be prioritized over others and the applicant will get the final disposition within 12 months from the allowance of the prioritized status by the USPTO.

The America Invents Act also provides for the provisions of Accelerated Examination (AE) and further it was discussed in 708.02(a) Manual of Patent Examining Procedure. Under this procedure the examination of the application will be given priority over other application by the USPTO for which the applicant has to file grantable "Petition to Make Special" under the accelerated examination program and pay the prescribed addition fees which is $35 for micro entity, $70 for small entity and $140 for Non Small entity. The main objective of this procedure is to complete the examination within 12 months time limit.

Both the procedures are not at all same there are numerous distinctions, which offers ascend to conceivable advantages in aligning patent application filing strategies with a applicants business tactics.

The Filling of pre-examination search document (PESD) and accelerated examination support document (AESD) in case of Accelerated Examination is one of the main distinction between the two procedure as Prioritized Examination does not requires the same. The main objective behind the PESD and AESD is to make the examiner understand the difference between the applicants invention and the closest prior art and how the claims are allowable. Basically the applicant is made to do the examiner's job of searching completely for prior art. Whereas the request for Prioritize Examination can be submitted at the time of filing and the only requirement for filing PE is that the patent application is to be “complete” at the time of filing.

The other difference between the two examination procedures is that PE allows 4 independent claims and 30 total claims where as AE process allows only 3 independent claims and 20 total claims subject to excess claim fees. All other essential requirements are the same for filling the AE and PE application like formal drawings, no missing part, correct margins, etc. Non Compliance of which may result in the dismissal or denial of the application.

The applicant now has many choices related to which examination procedure to select, which will going to suit to their business objectives and budget. While comparing the AE procedure with PE   it can be observed that the PE procedure gives the application special status with the lesser requirements that is the reason it is more often used. And the PE procedure will also be more cost efficient option for the early examination for the small entities as under this procedure they don’t have to pay hefty amount of money for preparation of the PESD or AESD to the professionals.

The AIA also provide for other option as expedited examination strategy like petitions to make special or important technologies, and patent prosecution highways. These procedures can also be utilized to speed up the examination and offer advantages to the applicants.