Expedited Examination Programs at the USPTO: What To Know to Secure Your Patent Promptly

by Miku H. Mehta, , Erica Spence, PharmD and Alejandro D. Echeverria

Expedited Examination Programs at the USPTO: What To Know to Secure Your Patent Promptly

From the moment a new invention or technology is realized, the race to patent the invention has begun. Anyone can apply for a patent to protect their inventions, discoveries and technologies at the U.S. Patent and Trademark Office (USPTO). Expedited examination programs are a way of accelerating the review of patent applications, if certain requirements are met. These expedited examination programs can be advantageous for those who need patent protection sooner rather than later. Additionally, some of these programs may not require a fee under certain circumstances.

The general policy regarding the examination of nonprovisional patent applications at the USPTO is that accepted applications are assigned to examiners according to the class of the claimed invention. Typically, each examiner will have their docket queued based on the earliest effective U.S. filing date. However, applications can be taken up earlier if they are given “special” status by the USPTO at the request of the applicant. These expedited examination programs can reduce the prosecution time of patent applications from just over two years to around twelve months, depending on the technology area.

A Petition to Make an Application Special may be filed without a prioritized examination fee under the following circumstances:

Applicant’s Health: An application may be made special for those applicants of poor health, who may not otherwise be available to assist in the application prosecution under normal timelines. To qualify, applicants must file a Petition to Make Special, and provide evidence such as a doctor’s certificate or medical certificate, showing that the state of health of the inventor or joint inventor may not permit their availability through the normal timeline for patent disposition. (See 37 CFR 1.102(c)(1)).
Applicant’s Age: An application may be made special for those applicants over the age of 65. To qualify, applicants must file a Petition to Make Special, accompanied by any evidence showing that the inventor or joint inventor is at least 65 years of age, such as a statement by the inventor or joint inventor or a statement from a registered practitioner that the practitioner has evidence that the inventor or joint inventor is at least 65 years of age. (See 37 CFR 1.102(c)(1)).
Environmental Quality: The USPTO will accord special status to all patent applications for inventions directed to improving and positively impacting the environment for human beings. To qualify, applications must include a Petition to Make Special, and must disclose an invention that materially contributes to restoring or maintaining basic life-sustaining natural elements, i.e., air, water, and soil. (See 37 CFR 1.102(c)(2)).
Energy: The USPTO will accord special status to all patent applications for inventions directed to (A) improving or increasing the availability of energy resources, or (B) the reduction of energy consumption. To qualify, applications must include a Petition to Make Special, and must materially contribute to technologies in category (A) or (B) above. (See 37 CFR 1.102(c)(2)).
Inventions for Countering Terrorism: In view of the impact of acts of terrorism in the United States and abroad, and the efforts of maintaining the sovereignty of the country through technological improvements, the USPTO will accord special status to patent applications for inventions which materially contribute to countering terrorism. These inventions could involve disabling systems, aircraft sensors, security systems, or detecting or identifying explosives, to name a few. To qualify, applications must include a Petition to Make Special, and must materially contribute to countering terrorism. (See 37 CFR 1.102(c)(2)).

Another option to accelerate the patent examination process is through applications disclosing inventions of particular importance to the public. Applications in this category must include a Petition to Make Special, pursuant to program requirements. The USPTO’s accelerated examination programs are:

The Cancer Immunotherapy Pilot Program: The Cancer Immunotherapy Pilot Program, or the Patents 4 Patients Program, is purposed to advance cancer therapy research. Under this Program, patent applications directed to cancer immunotherapy are advanced out of turn for examination and review, without a Petition to Make Special fee. The continued effectiveness of this Program, with over 615 granted patents under the pilot, prompted the USPTO to extend the Program until September 30, 2022.
The COVID-19 Prioritized Examination Pilot Program: Under this Program, small or micro entity status applicants that submit patent applications directed to a product or process related to COVID-19 that are subject to an applicable Food and Drug Administration (FDA) approval, will be accorded special status without the typical fees for prioritized examination. Additionally, the USPTO has indicated a final disposition of applications under this Program can be obtained within six months, if prompt communication from the applicant is maintained with the USPTO. Qualifying applications will be accepted until midnight, December 31, 2022.
The Climate Change Mitigation Pilot Program: The USPTO’s newest initiative, which we detailed in a previous article, grants accelerated review of patent applications that center on clean and green energy innovations that address climate change. Under this program, patent applications with claims directed to a product or process that reduces greenhouse gas emissions is afforded special status until a first action on the merits, without the payment of accelerated examination fees or satisfaction of other accelerated examination requirements. Petitions will be accepted until June 5, 2023, or once 1,000 applications have been granted special status under this program, whichever is earlier.
The Patent Prosecution Highway (PPH): The PPH is a bilateral program that offers an accelerated examination process for applications that have corresponding applications pending in participating intellectual property offices. PPH allows applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing. The PPH is particularly useful, because applicants can petition to participate at any time until the first office action on the merits, whereas some other acceleration programs are limited to petitioning concurrently with filing of the application. An application may be PPH-eligible if an office of earlier examination (OEE) has indicated allowable subject matter in its work product (e.g., allowance, office action or search report), and the pending claim(s) in the office of later examination (OLE) sufficiently correspond to the allowable claims in the OEE. Currently, there are at least 57 foreign patent offices participating under the PPH Program. A list of the participating foreign patent offices can be found at the PPH website.

Finally, applicants can pay a prioritized examination fee to fast-track examination of their patent applications, including utility, plant, and design applications as follows:

Prioritized Examination (Track One): Those who wish to have their patent applications examined quickly can, at the time of filing an original, continuation, or divisional (utility or plant) application, file a request for prioritized examination and pay a fee (currently set at $4,800 for large entities and $2,400 for small entities) for accelerated review of their patent applications. Under this program, applications are granted special status, have fewer requirements under current accelerated examination programs, and are not required to perform pre-examination searches. The program will provide patent applications final disposition within around twelve months for 15,000 applications every year.
Rocket Docket for Design Applications: This program offers an expedited examination for design applications. Those who wish to have their design application examined quickly can file a request for expedited examination and pay a fee (currently set at $1,800 for large entities and $1,000 for small entities). The average timeframe for all Rocket Docket applications that have received a first action is 2-3 months from the date request is granted.

Feel free to reach out to the Patent Prosecution and Counseling team at Procopio for more information on any of these programs.

About the Authors

Miku H. Mehta

Partner

Miku advises clients in the U.S. and Asia on intellectual property, patent prosecution and counseling, as well as trademarks and copyrights. His practice focuses on the preparation and prosecution of patent applications, due diligence projects, including preparation of opinions in the areas of patentability, validity, infringement and product clearance, and patent licensing. Miku has extensive experience in technology including computer software and hardware, networks, internet-related applications, environmental technologies, optics, mechanical engineering, business processes and medical devices, as well as registration and renewal of trademarks and counseling on export control matters. He is the leader of Procopio’s Intellectual Property team and its Asia Pacific practice.

Erica Spence, PharmD

Associate

Erica serves clients in the life sciences industry providing various intellectual property services. She brings industry and academic experience as a licensed pharmacist in California, having worked for many years worked in the retail pharmacy field. She is also a registered patent agent. Erica joined Procopio in 2021 as a summer associate and later became a law clerk assisting the firm’s patent prosecution attorneys in drafting patent claims and responding to U.S. Patent and Trademark Office non-final actions.

Alejandro D. Echeverria

Associate

Alejandro focuses on patent prosecution services while also counseling on broader intellectual property issues including trademarks. He serves clients in a wide range of technologies including mechanical engineering, environmental engineering, and renewable energy, based on his industry experience at Caterpillar, Collins Aerospace, and Pratt & Whitney.

With Alejandro’s Spanish fluency and sensitivity to cultural differences, he effectively supports Hispanic inventors in patent prosecution, litigation and other IP matters with tailored guidance respecting their unique perspectives and backgrounds.