Speedy prosecution before the USPTO Stefano John NAIP Education & Training Group / European Patent Attorney
I have previously written about the conditions in which a speedy prosecution to grant/rejection may be useful for the patent applicant. I have also used the various programs available in the various European offices as example of how to achieve this at relatively minimal costs. This is because European patent offices are keen to expedite the patent backlog and believe that supporting a speedy prosecution may help businesses in achieving worthwhile IP protection as soon as possible. The most classic example is that one cannot sue anybody without a patent first being granted and any provisional protection granted to the patent proprietor by publication of a patent application is limited according to national Law until its grant.
The USPTO has also instituted programs on a similar basis – to help businesses and to reduce the backlog of patent applications being the main reason. Some programs have now been terminated and other have been introduced through the AIA. These are those that are generally available at present: Accelerated Examination (AE), Prioritized Examination (PE) and using the Patent Prosecution Highway prioritized examination (PPH).
These three programs have different advantages and drawbacks. It is thus useful to know which one of the three is most applicable to a specific patent application as these could vary.
AE was a program set up relatively long ago, in 2006. It has evolved since then and is still running. Its goal is to reach a decision on the patentability of the invention claimed within 12 months (disposition). The main advantage is that it is relatively cheap – its fee is less than 10% of PE. The disadvantage of the system is that it imposes very stringent conditions on the applicant which include on patent prosecution such as having to reply to restriction requirements on the telephone and limitations on arguing patentability of dependent claims with respect to independent claims. The main disadvantage is that the applicant has to file a search of prior art carried out by the applicant (integrated into the IDS), where the search methodology (search strings) used has to be explained, and also an explanation of how the claims are patentable with respect to such prior art. Above the fact that this requires extra expense and work on the part of the applicant, one must also consider its utility in obtaining a granted US Patent since an applicant’s statement during prosecution can be used in limiting the granted claim scope and how such actions may find themselves falling foul of the duty of disclosure, candor, and good faith that one must maintain at all time before the USPTO.
PE was introduced by the AIA and is much more similar to a classical fast-track prioritized examination available in other patent offices. The main advantage is that it should reach disposition within 12 months also and does not impose the declaratory requirements of AE. It also imposes restrictions on prosecution, such as amending out of claim number effectively terminates accelerated prosecution, but at least the prosecution requirements to be satisfied pose less risk to the validity of the patent afterwards. Its main disadvantage is that it is expensive – currently about $4800.
One notable point about PE is that one cannot apply for it for US application deriving from a PCT. The reason for this may be that PPH program is available for this type of US application. PPH is an international program and the availability of using such a program with the USPTO vary on the details of the country the application derives from. A positive patentability report on at least one corresponding claim from TIPO or SIPO are acceptable to qualify for the PPH at the USPTO. Another major advantage of such a system is that it does not require a fee, but there are some minimal translation and formality filing costs. There is not strict deadline for the USPTO to issue disposition, but prosecution should be started within 2 months of the PPH request being accepted by the USPTO. Some commentators doubt the value of PPH in obtaining a positive examination, but the statistics available at the USPTO show that this system certainly speeds up prosecution and, at least in some cases, also has a positive effect on the probability of obtaining a granted US patent.
Another program that was popular was the USPTO First-Action Interview Program. Its main purpose was to speed up prosecution by requesting a preliminary telephone interview with the USPTO Examiner and using this possibility to reach a constructive conclusion on the main issues, as opposed to carrying this out by replying to multiple Office Actions. It did not require extra fees and was popular because, as the statistics showed, it had a positive effect on both the probability of having the patent application granted and on the speed of prosecution. Unfortunately the program was terminated in 2012 and many practitioners hope that the USPTO will revive the program again.
To conclude, from the main points explained above, it is this author’s opinion that the best option to access speedy prosecution before the USPTO at present is applying for the PPH prioritized system if this is possible. If this is not possible, then one should consider the cost of PE as opposed to the risks involved in applying for AE (which should really only be done when one is very sure of the patentability of one’s invention). It is however important to remind the reader that the above are general rules of thumb and choosing which program to apply for should require some serious thought, possibly by somebody well-acquainted with the various option available.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
