When meeting with a client to discuss a new patent application, one of the most common questions is; when will I get my patent? After hearing the answer includes the word “years”, the next question is invariability, what can we do to speed things up? The answer is to file a petition to make special, petition to accelerate examination under patent prosecution highway, or petition to prioritize examination. There are different requirements for each petition, but if it is granted, it is akin to a “fast pass” at an amusement park, allowing the patent application to jump ahead of other applications in the examination process.
After an application is filed with the U.S. Patent and Trademark Office (USPTO), the application is reviewed for formal requirements and is assigned to an examiner. According to USPTO records, the pendency of an application from filing to first action is around 1.5 years currently,[i] though this time frame is highly technology-dependent, with semiconductor and electrical fields having the longest time-to-first action, followed by the biotechnology and chemistry field and the mechanical engineering field.[ii]
The USPTO records also indicate that average pendency of an application to patent issuance or close of the final office action is just over 2 years, which is, again, technology dependent, with chemical engineering technology having the longest pendency at about 2.5 years.
The USPTO developed a means to shorten the pendency, as noted previously, that requires filing a petition. The simplest forms are for advanced age or failing health,[iii] and require proof at least one inventor is 65 years old or older (age) or has health issues that would prevent an inventor from assisting in the prosecution under normal examination timeframes. Other petitions to make special include improving the environment, improving energy development or conservation, or fighting terrorism.[iv] A petition to accelerate examination under patent prosecution highway requires examination of a patent cooperation treaty (PCT) application or foreign application, by an approved patent office,[v] with a finding that at least one claim is allowed. Prioritized examination requires payment of various fees, a fully complete application, and compliance with claim requirements.[vi]
While the available data is limited to prioritized examination, it does show a significant decrease in the amount of time an application takes to patent. From the filing of the application and petition to prioritize examination, the average pendency is 3.9 months to first action, and 7.1 months from filing to allowance or final office action. Thus, the petition reduces average pendency by about 1.5 years. My own client filed a biotechnology application with a petition to expedite for advanced age, with pendency from application filing to first action of 7 months, and pendency from application to allowance of 10 months. Thus, the client had received the issue notification less than one year from the initial application filing. While this is only one example, and does not speak to all applications, it does show the advantages of expediting the application process, where warranted.
[i] https://www.uspto.gov/dashboard/patents/pendency.html, last accessed Dec. 7, 2022.
[ii] Generated from USPTO records, https://www.uspto.gov/dashboard/patents/first-action-pendency-by-tc.html, last accessed Dec. 7, 2022.
[iii] 37 CFR §1.102(c).
[iv] 37 CFR §1.102(c).
[v] See, https://www.uspto.gov/patents/basics/international-protection/patent-prosecution-highway-pph-fast-track, last accessed December 9, 2022.
[vi] 37 CFR §1.102(e).
