3 accelerated patent prosecution options

When managing a patent portfolio, it is important to understand and control the speed at which patent applications are examined and prosecuted. The U.S. Patent and Trademark Office (PTO) and several other international patent offices have procedures that are designed to enable applicants to accelerate examination.

1. Track One Examination (Prioritized Examination)

Under the America Invents Act, Congress created a program called Track One Examination. Under Track One, the applicant files a complete application that includes a specification, claims, an abstract, drawings and a declaration. Additionally, the applicant is required to submit the standard fees required for filing of the application and an additional fee. Currently, the additional fee is $4,800. Track One, however, is a limited program and only 10,000 Track One applications may be filed per year. However, as of April 13, only 2,221 Track One requests had been made for Fiscal Year 2012.

2. Accelerated Prosecution

In order to have an application considered more quickly with only a minimal petition fee ($130), an applicant may choose to file a petition to make special. One petition to make special is the Petition to Make Special Under Accelerated Examination Program. An application filed under this program guarantees that a final disposition (e.g. final rejection or an allowance) will be reached within 12 months of filing.

This program requires the applicant to conduct a search and prepare an accelerated examination support document. Essentially, the applicant (usually through an attorney) must make statements concerning novelty and non-obviousness of the claims in light of art that has been found by the search. Since 2006, less than 4,000 applications have fulfilled the requirements.

3. Patent Prosecution Highway

Another program that affords an applicant an opportunity to accelerate examination is the Patent Prosecution Highway (PPH), for which there is no fee. Whereas applications are normally considered in the order in which they are filed, participation in the PPH means that the applicant’s application will be examined out of turn.