You've developed your new technology, taken care to keep it
confidential and are planning to file for patent protection at the
US Patent and Trademark Office (USPTO). Everything looks
good. Until your patent agent tells you it may
be 3 or more years before your patent is
A lot can happen in three years,
the worst of which is competitors infringing on your patent-pending
invention. Since the exclusive rights of patent protection only
come with patent issuance, there's little recourse until you
have a granted patent.
Fortunately, the USPTO offers two
different options for expediting the prosecution of your patent
application. We introduce each of these options
below and discuss some of their features:
Track 1 Prioritized
Examination – Track 1 involves the payment of a fee
($4800 or $2400 for small entities) when filing of the application
(including continuations and divisionals, but notably not PCT
national phase entries) to place the application on a prioritized
prosecution track. The USPTO indicates a target
period of twelve months from granting Track 1 Priority until a
final step of either issuing a notice of allowance or issuing a
final office action.
Responses to Office Actions must be filed within the time set out
- a request for extension of time or suspension of prosecution will
return the application to the non-prioritized prosecution track and
it will be subject to the usual prosecution
timelines. Track 1 applications are limited to a
total of 30 claims and 4 independent
Accelerated Examination – A
request for accelerated examination requires the furnishing of a
pre-examination search document (PESD) and accelerated examination
support document (AESD), which outline how the claims of the
application are allowable over the closest prior
art. As such, the initial search and
patentability assessment are conducted by the applicant and then
considered by the Examiners. The search criteria
and arguments in PSED and AESD are reviewed by two examiners and
then a third examiner considers allowability of the claims based on
these documents. In this sense, Accelerated
examination provides a very thorough exam and presumably strong
Prosecution of accelerated applications must adhere to very
strict and tight timelines, with the application becoming abandoned
if a deadline is missed. While the filing and accelerated exam
request costs are only about $1,500.00 (and about $700.00 for small
entities), there is significantly more cost to conducting the
search and preparing PESD and AESD. Accelerated
examination applications are limited to a total of 20 claims and 3
Both options require that the
application be published at the time of requesting expedited
examination. In some cases early publication,
ahead of the typical 18 months from priority, may not be desirable
and this will have to be weighed against the need for expedited
prosecution and early issuance.
At the end of the day choosing to
pursue expedited exam and choosing which option is right for you is
a business decision and one that should be discussed with your
patent agent to determine the best approach for you.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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