Speeding up patent prosecution and quickly obtaining an issued patent is generally a good thing.

The earlier a patent is issued, the earlier it can protect a product and be enforced against third party infringers. And since a U.S. patent typically expires 20 years from filing, fast issuance provides a longer term of protection and accelerates the building of value in a product or business.

Accelerated prosecution also can create a variety of other benefits:

  • Alignment of the product lifecycle with patent protection maximizes return on investment in patent protection and can enhance the expected revenue stream of a product or business.
  • Investors or acquirers can understand and assign value to a group of already issued patents, as opposed to the uncertain potential of pending applications.
  • Having early patent office examination results, and potentially patents in hand, provides information useful in formulating prosecution strategies and making business decisions.
  • For products requiring regulatory review, such as pharmaceuticals, early issuance of a patent can also maximize the patent term extension available.
  • An allowed patent in one country can be leveraged to accelerate examination in other countries, reducing the overall time and cost of prosecution across an entire portfolio.

What follows is a brief overview of some of the programs available to applicants for accelerating prosecution in selected patent offices around the world, as well as an example "use case."

United States

The U.S. Patent and Trademark Office (USPTO) provides several accelerated programs for patent prosecution.

The Track One program, which requires a $4,200 fee, allows expedited examination of a new or pending patent application with a goal of reaching final disposition of the application within 12 months.

The Climate Change Mitigation Pilot Program allows applications involving technologies that reduce greenhouse gas emissions to be advanced for examination until the mailing of a first action on the merits.

The Cancer Immunotherapy Pilot Program offers expedited examination of patent applications related to cancer immunotherapy, with a final decision issued within one year.

The USPTO participates in Patent Prosecution Highway (PPH) programs (e.g., Global Patent Prosecution Highway (GPPH) or IP5 PPH) for either a U.S. direct application or a U.S. national phase application related to a Patent Cooperation Treaty (PCT). Under this program, claims allowed in corresponding applications in participating patent offices can be a basis for accelerated examination of substantially identical claims in the USPTO.

Australia

The Australian Patent Office (IP Australia) offers expedited examination if the invention of a patent application is in the field of green technology, giving priority to environmentally friendly technologies.

If the applicant is a small or medium enterprise, expedited examination (i.e., fast-track examination that may begin within four to eight weeks) can be obtained at no additional cost.

IP Australia also participates in the GPPH.

Brazil

The National Institute of Industrial Property (INPI) of Brazil has a program for expediting examination of patent applications in Brazil, particularly for technologies involving pharmaceutical products or processes and health-related equipment and/or products that can contribute to diagnosing and treating AIDS, cancer, rare diseases and neglected diseases.

In addition, INPI provides priority examination for patent applications related to green technologies.

INPI also participates in PPH programs.

Canada

The Canadian Intellectual Property Office (CIPO) offers accelerated examination process (AEP) for green technology patent applications that relate to mitigating environmental impacts or conserving the natural environment and resources.

CIPO also participates in PPH programs.

China and Taiwan

The Chinese National Intellectual Property Administration (CNIPA) offers Measures on Prioritized Examination of Patent Applications (MPEPA) to expedite examination of patent applications that relate to energy conservation and environmental protection, as well as the generation of information technology (e.g., internet, big data or cloud computing), biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing, and other key national development industries and technical fields.

The Taiwan Intellectual Property Office (TIPO) also offers an Accelerated Examination Program (AEP), under which an application is eligible for accelerated examination after entry into substantive examination. AEP is also available for applications directed to green technology implementation.

Both CNIPA and TIPO also participate in PPH programs. (CNIPA typically issues a first Office Action within about nine to 12 months after PPH requirements are met, and TIPO typically issues a first Office Action within about two to four months after PPH requirements are met.)

Europe

Requests for Accelerated Examination in the European Patent Office (EPO) are made under the EPO PACE Program. Once requested, the EPO will aim to issue an Office Action within three months. No fee is required with a PACE request.

EPO also participates in PPH programs, but applies EPO standards for assessing added matter in applications examined under the PPH.

There are other aspects of EPO prosecution that can be accelerated as well - e.g., by waiving the Rule 161 option to file voluntary amendments and the "wish to proceed" communication when a PCT application first enters the Regional Phase in Europe.

Japan

The Japanese Patent Office (JPO) offers Accelerated Examination (AE) procedures or Super-Accelerated Examination (SAE) procedures. If the patent application has a counterpart filed at a Patent Office other than the JPO (e.g., the USPTO), the applicant or its licensee can request AE regardless of the results of the examination of the counterpart. If the applicant or its licensee practiced or plans to practice the invention within two years, SAE can be requested. Average duration to obtain a first Office Action is about three months for AE and about one month for SAE after starting the examination procedure. These times can be delayed if the application is a Japanese national phase of a PCT application. Thus, filing a Japan-direct application via the Paris Convention is recommended.

JPO also participates in PPH programs, but PPH generally offers no advantage over AE and SAE.

Republic of Korea

The Korean Intellectual Property Office (KIPO) provides accelerated examination if a preliminary search report prepared by a KIPO designated search organization is submitted.

KIPO also participates in PPH programs.

New Zealand

The Intellectual Property Office of New Zealand (IPONZ) offers expedited examination for applications directed to green technology or clean technology.

IPONZ also participates in PPH programs.

Example Use Case

An applicant concurrently files both a PCT application and a US non-provisional application. The applicant then requests Track One examination in the US, which may lead to allowance in as little as 12 months. After allowance of the US case, the applicant proceeds with early national phase filings from the PCT in countries of interest, utilizing the PPH based on the allowed Track One US claims. Results may vary in individual countries, but expedited allowance with fewer office actions may generally be expected.

Planning

To take advantage of these and other programs, patent applicants should first consult with counsel to develop a strategy. Please contact Scott Warren at swarren@foxrothschild.com, Joohee Lee at jooheelee@foxrothschild.com, or any member of Fox Rothschild's national Patent Law Practice Group.

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.