On 10 June 2025, the US Patent and Trademark Office (USPTO) published a Final Rule announcing the discontinuation of the Accelerated Examination program for utility applications beginning 10 July 2025. The change affects the avenues available for applicants to receive expedited examination and modifies the grounds upon which a petition to make special is granted.
Legal Background
The Accelerated Examination program allows for an application to be advanced out of turn for examination if the applicant files a petition to make special under the program. To be granted accelerated examination status, an applicant must meet several requirements, including completing a pre-examination search and limiting his or her invention to 20 total claims.1 Under current rules, all other petitions to make special, except those based on an applicant's health or age, must fulfill these same requirements.2 Petitions to make special based on an invention enhancing the quality of the environment, contributing to the development or conservation of energy resources, or countering terrorism do not require an additional fee under the program.3
Alternative avenues for expedited examination outside of the Accelerated Examination program include the Patent Prosecution Highway program and the Prioritized Examination Program, often referred to as "Track One."
Rule Change
The Final Rule takes the position that the Accelerated Examination program is unnecessary for utility applications considering the availability of the Track One program. Track One provides the ability to advance any utility or plant application, regardless of subject matter, by paying a fee and without an applicant having to meet several of the requirements of the Accelerated Examination program, such as the pre-examination search.
After the Accelerated Examination program is discontinued, applicants can still receive expedited examination of their applications with the Track One program. If an applicant seeks to petition to make special on a basis other than age or health, the applicant must now comply with the Track One requirements under 37 C.F.R. § 1.102(e) instead of the Accelerated Examination program. To reflect this change, the Final Rule removes 37 C.F.R. § 1.102(c)(2) to indicate that the advancement of an examination on the grounds of environmental quality enhancement, conservation of energy resources, or countering terrorism is no longer available without a fee.
Age and health will remain grounds for a petition to make special. However, the Final Rule amends the language of 37 C.F.R. § 1.102(c) to state that the inventor's or joint inventor's age or health may be a ground to file a petition to make special without a fee. Previously, the rule stated that a petition to make special may be filed without a fee based on the applicant's age or health.
This change clarifies that it is the inventor's age or health that is relevant to receiving expedited examination, not the applicant's.
Looking Forward
The Final Rule will take effect 10 July 2025. Any petition or request for reconsideration of a petition to make special under the Accelerated Examination program filed with a utility patent on or after this date will not be granted, irrespective of the filing date and time of any prior Accelerated Examination petition and without regard to the USPTO's determination that an applicant was afforded an opportunity to correct a prior deficient Accelerated Examination petition under the program.
We acknowledge the contributions to this publication from our summer associate Nav Murthy.
Footnotes
1. MPEP 708.02(a).
2. Id.
3. 37 C.F.R. § 1.102(c)(2).
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.
