As a patent attorney working with startups who get things done overnight, one common complaint I get is the patent process is too slow and too costly. I’m glad to report that I can fix both issues. I can fix the cost issue by recommending these founders use patent automation software such as those from PowerPatent to give me high quality invention disclosure that can be quickly converted into a patent format. As to the slow examination process at the US Patent and Trademark Office (USPTO), I am glad to report that you can get accelerated examination as well.
If you have a need for speed
Certain industries such as the software industry moves quickly. There are many examples of software innovation happening at a rapid pace in various industries. Some examples include:
- The mobile app industry, where new apps and updates are constantly being released to the market.
- The internet of things (IoT) industry, where new devices and technologies are being developed and released at a rapid pace.
- Artificial intelligence (AI) and machine learning (ML) technologies are advancing quickly and being used in a wide range of applications, such as self-driving cars, voice assistants, and medical diagnosis.
- Cloud computing, where new services and technologies are being developed and released at a rapid pace, allowing for faster and more efficient computing.
- The gaming industry, where new games and updates are constantly being released, and new technology like virtual reality and augmented reality are being developed.
These are just a few examples of the many areas where software innovation is happening quickly, and there are many more examples in other industries as well.
In contrast, the patent examination process can take several years to complete. This can be a problem for software developers and companies, as their technology may be outdated by the time their patent is granted. Additionally, the process of obtaining a patent for software can be costly and time-consuming, which can be a deterrent for some companies. Alternative methods available to protect software, such as copyright and trade secret protection, just do not work well for certain companies. For these companies, issued patents arrive too late for them as they have moved on to the next innovations already. So what options are available to these companies?
Fortunately, the USPTO offers several options available to accelerate the examination process for software patents:
- Priority Examination (Track One): This option allows applicants to request accelerated examination of their patent application in exchange for paying an additional fee. This can help move the application to the front of the queue for examination and typically results in a final disposition within 12 months.
- Accelerated Examination (AE): The AE program is a way to expedite the examination of an application that the USPTO determines has the potential to be of exceptional public importance. To qualify, the application must be filed under the first-inventor-to-file provisions of the America Invents Act (AIA) and the applicant must submit a statement explaining why the invention is important.
- Patent Prosecution Highway (PPH): The PPH allows applicants to fast-track their patent application by relying on the work already done by other patent offices. Under the PPH, an applicant can request that an already-allowed claim in a corresponding application filed in another country be used as a basis for accelerating examination of the corresponding application in the USPTO.
- Green Technology Pilot Program (GTPP): The GTPP is a program that allows for expedited examination of patent applications related to certain environmentally friendly technologies.
- Patent Trial and Appeal Board (PTAB) :If the patent office denies the application, the applicant can appeal the decision and request for a review by PTAB, which is an administrative court within the USPTO that can review and overturn patent office decisions.
Priority examination (Track One)
Applicants seeking patent protection in the United States should consider filing their applications in a prioritized examination program at the United States Patent and Trademark Office (USPTO). This type of expedited examination is available for both new and continuing applications. There are two programs to choose from: Track One and Accelerated Examination. Both of these initiatives are intended to get the final decision on your application to you within 12 months. However, there are some differences in the two programs that applicants should be aware of.
The Track One program has less requirements than the Accelerated Examination Program. In particular, the application must be nonprovisional and contain no more than thirty total patent claims. It is also necessary to file the application electronically. Using the USPTO’s Electronic Filing System-Web (EFS-Web) is a recommended option.
Currently, the USPTO limits the number of requests it accepts for prioritized examination to 10,000 per fiscal year. The number of applications granted for priority examination may be expanded in the future. Those who qualify for prioritized status are usually those who are younger than 65 years of age.
Moreover, those who are ill, in poor health or in need of a patent quickly are often granted “fast track” status. Whether or not your application qualifies for prioritized examination will depend on the requirements outlined in the law.
When requesting for priority examination, applicants must first meet the requirements of the Leahy-Smith America Invents Act. For example, the applicant must be aware of the prior art associated with the claimed invention, and the specification must be complete and clear. They also must submit an executed Application Data Sheet, and certify that they are micro entity. Finally, the application must include the claimed invention in a COVID-19-related method or product claim.
If your application is eligible for prioritized examination, the USPTO will place it on a special docket. You will receive a notice regarding your application’s status. During this time, you will be able to make amendments to your claims. After the Office rejects your application, you can request to amend your claims in response to the examiner’s findings. As long as your amended claims are within the limitations of the final rejection, you will be awarded a “fast track” to patent issuance.
Before submitting your request for a prioritized examination, you should check with your legal counsel for guidance on the types of applications that are appropriate. If you are unsure, you can consult the USPTO’s Prioritized Examination FAQs for assistance. Additionally, you can use the USPTO’s Patent Help Desk or petition help desk to request help with the process. Alternatively, you can contact the examiner directly. Lastly, be sure to prepare to have an interview with the examiner.
The Track One program is an expedited examination process provided by the United States Patent and Trademark Office. It was created in response to changes made by the Leahy-Smith America Invents Act of 2011. This system allows applicants to receive a patent allowance or a rejection of a patent application in a shorter period of time than usual. In most cases, a Track One application will get the first examination report within 3.4 months of the filing date. A patent can be granted or rejected in as little as 12 months.
While the program provides a faster patent prosecution process, it is not available for all types of applications. Applications that require pre-examination searches or reexamination proceedings are not eligible. However, if you are seeking a patent for a plant or utility invention, you may qualify for the program. You will need to prepare an examination support document, similar to the USPTO examination.
The USPTO recently increased the number of Track One petitions it accepts. They now accept about 15,000 per year, which is roughly four times the amount they accepted in 2017. If you are an inventor who wants to file for a patent quickly, you should consider the program. Although it is not for every type of application, it is attractive to some applicants because it speeds up the prosecution process.
Applications that qualify for the Track One program must also be filed with additional fees. These fees include a basic filing fee, a search fee, a publication fee, and excess claims fees. Fees for these additional fees vary depending on the size of your entity. For example, if your application is a small business that has less than 100 employees, you will only need to pay an extra government fee of $2170. Large entities will need to pay a total government fee of $4340.
The Track One program has proven to be extremely popular amongst patent applicants. Thousands of inventors, large law firms, and tech companies have used the program in recent years. There have been fewer examination reports than usual for Track One requests, but applicants still benefit from a higher allowance rate.
The USPTO has continued to monitor the program, and it is believed to be on track to expand the number of petitions it accepts. Applicants who do not qualify for the program can file a continuation patent application, which will also be treated as an expedited examination. Continuation patent applications will not be eligible for Track One, however.
As of today, the USPTO has set the maximum limit for Track One requests at fifteen thousand. Previously, the limit was only 12,000 requests per fiscal year. When the limit has been reached, the request is no longer accepted.
It’s important to note that while these options can help speed up the examination process, they do not guarantee that a patent will be granted. Additionally, each option may have specific requirements and qualifications that must be met in order to be eligible. It is always recommended to consult with a patent attorney to determine which option is best for your application and to help navigate the process.
Accelerated Examination (AE)
Accelerated Examination (AE) is a program offered by the United States Patent and Trademark Office (USPTO) that allows applicants to have their patent applications examined more quickly than under standard examination procedures. To qualify for AE, the applicant must file a request for AE and pay an additional fee, and the application must be a non-provisional utility or plant application that has not been previously examined.
AE is intended to provide a faster path to patent protection for technologies that have the potential to be commercially successful or have significant societal benefit.
Once a request for AE is filed, the USPTO will conduct a preliminary examination of the application to determine if it is eligible for AE. If the application is found to be eligible, it will be placed on the AE track and will be given priority over other non-AE applications. The examination process is then typically completed within 12 months of the request for AE being granted.
While AE is intended to speed up the patent examination process, it is important to note that the program is not guaranteed to result in the grant of a patent, and the application may still be rejected by the USPTO. Additionally, the accelerated examination process is more demanding than the standard process, and the applicant must be prepared to respond to any objections or rejections quickly.
Patent Prosecution Highway (PPH)
The Patent Prosecution Highway (PPH) is a program that allows applicants to have their patent applications examined more quickly by leveraging the work that has already been done by other patent offices. The PPH program allows an applicant to request that the examination of an application be fast-tracked based on the examination results of a corresponding application filed in another participating patent office. This allows the applicant to take advantage of the work that has already been done by another office, reducing the time and resources required for examination.
The PPH program is based on the principle of “work-sharing” among participating patent offices, which allows them to leverage each other’s examination work, to reduce examination workloads and improve the quality of examination. The PPH program can be used for both national and regional patent applications, and it is currently available between more than 50 countries including USPTO, EPO, JPO, IP Australia, IP Canada, KIPO, and many others.
To take advantage of the PPH program, an applicant must file a request for PPH examination with the receiving office, along with a copy of the examination results from the office where the corresponding application was filed. The receiving office will then conduct its examination based on the examination results from the office where the corresponding application was filed, and the applicant can expect to receive an examination report or decision more quickly than under standard examination procedures.
It is important to note that the PPH program does not guarantee that a patent will be granted, and the application may still be rejected by the receiving office. Additionally, the PPH program is focused on accelerating the examination process and does not affect the time it takes for the patent to be granted.
Green Technology Pilot Program (GTPP)
The Green Technology Pilot Program (GTPP) was a program offered by the United States Patent and Trademark Office (USPTO) that aimed to accelerate the examination process for patent applications related to environmentally friendly technologies, also known as “green technologies.” The program was intended to encourage innovation in this field by providing a faster path to patent protection for technologies that have the potential to contribute to the reduction of greenhouse gas emissions or the conservation of energy and other natural resources.
Under the GTPP, applicants could request accelerated examination of their patent application by filing a request for GTPP participation and paying an additional fee. Eligible applications included non-provisional utility and plant applications in certain technology areas such as renewable energy, energy conservation, and environmental quality.
Once a request for GTPP participation was filed, the USPTO would conduct a preliminary examination of the application to determine if it was eligible for the program. If the application was found to be eligible, it would be placed on the GTPP track and given priority over other non-GTPP applications. The examination process would then typically be completed within 12 months of the request for GTPP participation being granted.
The GTPP program was in effect from 2009 to 2016, and it was ended due to lack of resources and support. However, many of the technologies that were covered by the GTPP program are still eligible for the Accelerated Examination(AE) program, which allows applicants to have their patent applications examined more quickly by the USPTO than under standard examination procedures, with similar requirements as the GTPP.
Other Acceleration Initiatives
Age-related acceleration is a program that allows applicants to have their patent applications examined more quickly based on the age of the applicant. The program is designed to provide a faster path to patent protection for older inventors, who may have a limited window of time to commercialize their invention.
The specific requirements and eligibility criteria for age-related acceleration program vary among countries, but generally it is available to inventors who are above a certain age, usually around 65 years or older. In some countries, the program may also be available to inventors who have a medical condition that limits their ability to commercialize their invention.
For example, the United States Patent and Trademark Office (USPTO) has an Elder Applicant program that allows elderly inventors to request expedited examination of their patent applications. To qualify for the program, an applicant must be 65 years of age or older at the time of filing the request for expedited examination.
It is important to note that the age-related acceleration program does not guarantee that a patent will be granted, and the application may still be rejected by the patent office. Additionally, the accelerated examination process is more demanding than the standard process, and the applicant must be prepared to respond to any objections or rejections quickly.
COVID-related acceleration refers to programs or initiatives that have been put in place by various patent offices to expedite the examination process for patent applications related to technologies that are being developed in response to the COVID-19 pandemic. The goal of these programs is to provide a faster path to patent protection for technologies that have the potential to help combat the pandemic, such as vaccines, diagnostic tests, and medical devices.
For example, in the United States, the USPTO has put in place a COVID-19 Prioritized Examination Program, which allows applicants to request expedited examination of their patent applications related to COVID-19 technologies. To qualify for the program, an applicant must file a request for prioritized examination and pay an additional fee, and the application must be related to a technology that is being developed to diagnose, prevent, or treat COVID-19.
Similarly, in Europe, the European Patent Office (EPO) has announced a COVID-19 fast-track service for patent applications related to the pandemic. This service allows applicants to request expedited examination of their patent applications, with the goal of issuing a decision within six months of the request being filed.
It is important to note that these programs are usually temporary and may have a limited period of availability, and they do not guarantee that a patent will be granted, and the application may still be rejected by the patent office. Additionally, the accelerated examination process is more demanding than the standard process, and the applicant must be prepared to respond to any objections or rejections quickly.