Need for Accelerated Examination: Accelerated examination refers to the provision to fast-track patent applications to obtain patents for their inventions in different patent jurisdictions. The procedure to get a patent is tedious involving a great deal of intellectual and budgetary endeavors. Most often, Applicants look forward to avenues that can reduce this time in order to enjoy their IP rights. Accelerated examination in different geographical jurisdictions have different criteria and administrative requirements that need to be satisfied for a successful outcome.
USPTO has three provisions to expedite patent examination for patent applications.
1) Accelerated Examination: Under this provision, the applicant needs to apply with a dossier of documents such as
- Petition for 12-month Accelerated Exam (Form PTO/SB/28)
- Statement of Pre-examination Search
- Examination Support Document
- The usual application contents — Required upon filing for Accelerated Examination
- Basic filing fee, search fee and examination fee
- Executed oath or declaration
- Transmittal letter
- Should include suggested classification, by class and subclass. Class and subclass may also be submitted using the USPTO form fillable ADS
- File 3 or fewer independent claims and no more than 20 claims total.
If need be, the below given documents may be also submitted if deemed necessary
- Application size fee
- Specification- Not in English
- Translation of Foreign Priority Documents
The petition fees and other details may be accessed from the below given links:
What is more important is that a detailed statement of pre-examination search, an examination support document detailing the in-depth search strategy, how each claim is different from the cited prior arts in the statement of pre-examination search, clear provision of a defined search logic be employed to prepare the detailed documentation submitted to the USPTO. Some advantages associated with accelerated examination is low USPTO Fees and that the request may also be filed after initial filing of the application.
2) Prioritized Examination: This provision refers to another way to obtain patents for niche technologies within a year. USPTO’s Track One prioritized examination is offered for utility and plant patent applications. Track One or Track I accords a special status to the subject application with fewer requirements when compared to the current accelerated examination program. The most salient feature is that Track One prioritized examination precludes the need to perform a pre-examination search. Prioritized examination is available at the time of filing. Only a single request for prioritized examination may be granted for a Request for Continued Examination (RCE) in a plant or utility application. The rule applicable to prioritized examination is 37 C.F.R. § 1.102(e). Other statutory requirements include:
- No more than four independent claims and 30 total claims
- Track One request must be made at initial filing (consider filing a continuation if an application already exists) Track I prioritized examination is limited to 10,000 applications per year. Applying for Track I prioritized examination incurs no additional preparation burden on the Applicant. It can be likened to any non-provisional patent application. Excluding the exorbitant financial burden in terms of the statutory fees applicable there are no other caveats in applying for a Track I prioritized examination.
3) Petition to make Special via the Patent Prosecution Highway: The Patent Prosecution Highway (PPH) hastens the process of examination for corresponding applications filed in participating intellectual property offices. Under PPH, participating patent offices have settled that when an Applicant receives a notice of allowance from a first patent office wherein at least one claim is allowed, the Applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending at a second patent office. PPH utilizes the fast-track examination procedures enforced amongst participating patent offices to enable Applicants to reach final disposition of a patent application in a swift and efficient manner than standard examination procedures.
Further, a petition to make an application special may be filed without a fee if the basis for the petition is:
- The applicant’s age or health; or
- That the invention will materially:
- Enhance the quality of the environment;
- Contribute to the development or conservation of energy resources; or
- Contribute to countering terrorism.