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  1. #1

    Default How to Expedite a Patent Application

    Is there a way to expedite prosecution after a non-provisional application was filed, other than Accelerated Examination?
    The application was originally filed in June 2016, and my understanding is that Requests to expedite prosecution such as Fast Track, must be filed at the time of filing of the application, but I could be wrong.
    Unfortunately, our client does not qualify for the Accelerated Examination program based on age, health, etc.

  2. #2
    Join Date
    Sep 2010
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    19,901

    Default Re: How to Expedite a Patent Application

    What do you mean "client?" What is your relationship between you and the patent holder?

    There are a number of ways to speed up the process like TrackOne. Accellerated Examination is not limited to those with age/health issues.
    That's for the "petition to make special." Most of these ways to increase the speed require additional money to be submitted and in addition you to take on some of the search requirements that the PTO would do themselves.

    The next question is why they think they need to go the expedited route.

  3. #3

    Default Re: How to Expedite a Patent Application

    As flyingiron said, there are many criteria that can allow you to participate in the Patent Initiatives. The complete listing is here:
    - Applicant's age is 65 or more
    - Applicant's health is such that he or she might not be available to assist in the prosecution of the application
    - The invention will materially enhance the quality of the environment
    - The invention will contribute to the development or conservation of energy resources
    - The invention will contribute to countering terrorism
    - There is prospective manufacture
    - There is actual infringement
    - The invention is in field of safety of research in the field for recombinant DNA
    - The invention is in the field of superconductivity
    - The invention is in the field of HIV/AIDS or cancer
    - The applicant is a small entity and the invention is in the field of biotechnology

    Other ways are Patent Prosecution Highway (requiring the application is allowed by another patent office, like EPO).
    Unofficially, you might be able to have patent application examined faster (slightly) by making less claims. Patent examiners will sometimes cherrypick easier cases and examine them earlier in order to meet production requirements.

    That said, I agree with why do you want to get the application expedited? The USPTO's backlog have been significantly reduced and in some areas the backlog is less than a year. Patent protections are backtracked to when the application was filed anyways, so you still have protections for implementing any invention and can claim it as patent pending since you have an application filed with the USPTO.

  4. #4

    Default Re: How to Expedite a Patent Application

    Thanks for your reply flyingron. Our client is a company which is applying to patent an invention that some of its employees developed. The reason they are suddenly interested in expediting prosecution is because they have found a potential investor, and this person wants to know if the patent will be granted before he commits any funds.

  5. #5

    Default Re: How to Expedite a Patent Application

    Quote Quoting marioavarela
    View Post
    Thanks for your reply flyingron. Our client is a company which is applying to patent an invention that some of its employees developed. The reason they are suddenly interested in expediting prosecution is because they have found a potential investor, and this person wants to know if the patent will be granted before he commits any funds.
    Ok, do you know if prosecution has already started on the application? Is the application from an international application (aka PCT, Rule 371)? How many claims does the application have (independent and total)? If prosecution has not started on the application, then you may be able to still file for the application to be prioritized. TrackOne requires that the application has no more than 4 independent claims, no more than 30 claims total, and no multiple dependent claim. If the application is a national stage entry (through a PCT, rule 371), then you can get prioritized examination through PPH. If prosecution has already started with the application, you may have to wait until the application comes back as an RCE before you can then file for prioritized prosecution. Note however the Track One program does have a limit of 10,000 applications can be prioritized any given calendar year out of all the applications the Patent Office receives.

  6. #6

    Default Re: How to Expedite a Patent Application

    Vadad1, thanks for your reply. This application is for a US patent, and it contains 3 independent claims and a total of 20 claims. We will contact USPTO to find out if they have started examination yet.

    My understanding is that usually there is a 1-3 year wait before examination begins, depending on the USPTO’s backlog. In this case, the non-provisional was filed in June 2016 and since no Office Action has been issued to date, it is possible that examination has not begun yet.

    If we file an RCE, do we need to amend or add any claims? Or would it be ok if we submit the same claims with the RCE?

  7. #7

    Default Re: How to Expedite a Patent Application

    You can just file the request to make special for prioritized prosecution electronically and if the Patent Office determines you don't get it, then there will be a refund. That may be your best option right now.

    You can only file an RCE after the final rejection has been sent on the application by the examiner. The office treats the RCE as if it's a new application, so you can choose to amend/add/cancel/or maintain the same claims as you like. Just note that if you submit the same claims without any amendments, it is not conducive to moving prosecution forward which should be the goal of both sides to help the case reach a final determination of patentability. As an example, if you claim a black car and the examiner rejects it with the Model T, you are free to keep submitting the claim of a black car, but should know that no matter how many times you claim a black car, the examiner can and likely will continue to reject it with the Model T. In this example, the client would likely make the attorney/agent working on the case and the examiner very happy as they get to send the same correspondence back and forth forever while the client pays for them to do so.

    If you add claims, keep in mind the claim limits if you want to make the application prioritized for special prosecution. the backlog depends a lot on what art the application is classified as. Some areas have no backlog at all, so examination begins in just a month of filing, but in other areas, the backlog could be more severe and therefore longer.

  8. #8

    Default Re: How to Expedite a Patent Application

    Vadad1, this is great info. Many thanks for the advice and insights.

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