Legal Matters: Try using accelerated examination to get your patents faster

Brent Johnson & Jennifer Zhou

Drafting a patent application usually requires that the patent attorney or agent predict what prior art the examiner may cite, and what prior art might destroy the novelty of the claims as filed. The practitioner also needs to be able to predict what prior art may be cited in an obviousness rejection and how the examiner may combine the prior art to make the rejection. This exercise of predicting what may happen in future prosecution is intended to provide great flexibility in the application’s disclosure to support a variety of claim amendments in later prosecution. This is because there is always a variety of ways that an examiner might potentially use the prior art to reject the claims. In fact, examiners frequently make rejections that are different than what an attorney or agent might have expected. As a result, later prosecution can reveal the weaknesses in the disclosure of the application as filed. Fortunately, accelerated examination in the U.S. can help to address this disadvantage.

One of the biggest problems a patent applicant faces is that the publication of her own application (Application 1) may prevent the applicant from having any remedy for the gaps in disclosure. Most countries do not consider unpublished applications to be prior art for obviousness or inventive step purposes. Thus, a patent applicant can file a new patent application (Application 2) before publication of Application 1 with addition of new disclosure that supports new claim limitations. This may be very useful for Application 2 to avoid the prior art cited against Application 1 for the purposes of obviousness or inventive step. It also allows the patent applicant to add new claim limitations in Application 2, which are novel but are probably not inventive or are obvious over Application 1.

Most of the time, the first Office Action is normally received within three months of filing an application under accelerated examination in the United States. This means that if Application 1 is filed at or before the 12-month priority claiming deadline (for an earlier U.S. Provisional Application or an earlier priority application originating outside of the U.S.), the first Office Action will likely be received several months before Application 1 publishes (18 months from the priority date).

As a result, the applicant has an opportunity before Application 1 publishes to see what rejections are made against the claims of Application 1 in the first Office Action, and based on that to decide whether it is necessary to file Application 2 before Application 1 is published. The pre-publication filing of Application 2 avoids Application 1 as prior art for the purposes of obviousness or inventive step, while still allowing the applicant to add new subject matter, and/or revise or add new disclosure to support amendment around the problematic prior art raised in the Office Action in Application 1.

Another advantage of accelerated examination is that can allow an attorney or agent to be strategic about priority claiming in the application. Because the applicant can potentially wait to see what the examiner cited references and rejections are in the first Office Action before deciding whether to make changes to a priority claim in question still early enough to avoid paying a petition fee or having to make a statement that the delay in making the priority claim is unintentional. (37 CFR 1.55d(1).)

Another significant advantage of accelerated examination is that a thorough U.S. prosecution is completed prior to the 30-month national stage filing deadline, which can help the applicant to make informed decision on which countries to file national phase application. This can potentially be useful in saving tens of thousands of dollars, or more, in international patent prosecution.

There are a number of ways that patent prosecution in the U.S. can be accelerated. Among them, we have found Track I accelerated examination particularly useful. Track I is a procedure for expedited review of a patent application for an additional fee. The Track I program provides for final disposition of a U.S. utility or plant patent application within 12 months, on average, from the date on which the Track I request is granted.

Track I examination is requested under 37 CFR § 1.102 (e). Currently there is a Track I filing fee of $4,200 for large entity ($2,100 for small entity) in addition to the normal filing fee, search fee, examination fee, processing fee, publication fee and any excess claim or page fees.

Additionally, the following requirements must meet for filing a Track I patent application:

1. There can be no more than four independent claims;

2. There can be no more than 30 total claims; and

3. There can be no multiple dependent claims.

Furthermore, for filing a Track I U.S. patent application, in addition to the normal filing documents for a regular track patent application, you also need submit Track I Request form (Doc Code: TRACK1.REQ). We strongly recommend using the USPTO’s certification and request form PTO/AIA/424 to request prioritized examination.

When filing a Track I patent application, the applicant needs to be mindful of the following rules.

The Track I prioritized examination program grants special status until one of the following occurs:

a. Filing a petition for extension of time;

b. amending the application to contain more than four independent claims, more than 30 total claims or a multiple dependent claim;

c. filing a request for continued examination (RCE);

d. filing a notice of appeal;

e. filing a request for suspension of action;

f. a notice of allowance;

g. a final Office Action;

h. the application is abandoned; or

i. examination is completed as defined in 37 CFR 41.102.

In summary, accelerated examination, such as Track I in the United States, is a valuable tool for the patent prosecutor. Not only does it allow a patent practitioner to get patents quickly for her client, but it also provides strategic advantages for the client during prosecution.

Brent Johnson is a shareholder at Maschoff Brennan. He is focused on patent prosecution, BPAI post-grant proceedings, IP due diligence and client counseling — particularly in the areas of pharmaceutical and other chemistry-related technologies.

Jennifer Zhou is a patent agent at Maschoff Brennan. Her practice has a strong life science and technology focus, including patent application drafting and prosecution. She has published over 40 peer-reviewed papers in scientific journals.