How to Speed Up Your Patent Application Examination. Episode 30

(The original episode aired in 2018, some information and costs have changed)

How Long Does a Patent Application Take?

We’re almost to the episode where I explain how to actually submit your application to the patent office, but before that, I want to discuss how to speed up the examination process.

A lot of people ask me how long it takes for a patent application to be processed once it’s filed. And, as with most legal questions, the answer is: it depends.

• I’ve had applications get allowed in as little as three months.

• I’ve also had applications sit in the patent office for over two years.

• The most recent data suggests that the average time to receive a first response from the patent office is 16 months.

When you file a patent application, it gets assigned to a technology group.

• Different technology groups have different backlogs.

• For example, a molecular compound application will go to a different group than a hamster wheel invention.

• Some technology groups have backlogs of only eight months, while others can have backlogs of two years or more.

Since there is usually some back and forth between you and the patent office before your application is allowed (if it gets allowed at all), the typical time frame for a granted patent is two to three years.

So, if you don’t want to wait that long, what can you do?

Option 1: Prioritized Patent Examination Program (Track One)

The easiest way to get your application examined faster is through the Prioritized Patent Examination Program, also called Track One.

With this program, you pay the patent office to move your application to the front of the line.

Current fees for Track One:

• $1,000 if you’re a micro entity

• $2,000 if you’re a small entity

• $4,000 if you’re a large entity

These are the main fees you will see when looking up Track One costs on the USPTO website, but there is also an additional processing fee that many people overlook:

• $35 for a micro entity

• $70 for a small entity

• $140 for a large entity

So, the actual total cost for Track One is:

• $1,035 for a micro entity

• $2,070 for a small entity

• $4,140 for a large entity

To request Track One, you need to submit USPTO Form AIA/424, which can be found on the USPTO website. You simply:

• Enter your name and title of the invention

• Check the box under “Original Application” (since that’s likely what you’re filing)

• Print and sign your name at the bottom

The goal of this program is to get your patent allowed within 12 months.

• Right now, the average time for a first response is about four months,

• A couple of quick back-and-forth exchanges can lead to an allowance within 12 months.

There is a 10,000-application limit per year for Track One, so in theory, if you apply late in the year, there might not be any slots available. However, in practice, I haven’t seen this happen, and the USPTO does not typically reach the cap.

Option 2: Accelerated Examination

Another way to speed up examination is through Accelerated Examination, but it has more filing requirements than Track One.

To qualify for Accelerated Examination, you must:

• Conduct a Pre-Examination Search for each claim.

• Disclose all relevant references and explain how they relate to your invention.

• Identify the most relevant prior art and explain why each claim is patentable over it.

• Participate in a mandatory examiner interview (which is actually beneficial for getting a patent allowed).

The fees for Accelerated Examination are much lower than for Track One:

• $35 for a micro entity

• $70 for a small entity

• $140 for a large entity

However, the amount of work required by the inventor or attorney is much greater than Track One. Since attorney time is expensive, the extra work typically costs more than the Track One fee—making Accelerated Examination less attractive.

Option 3: Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) allows you to expedite your U.S. patent application if you first filed in another country and that country allowed your application.

• No extra fees are required for PPH.

• If you qualify, there is no reason not to use it.

However, if you’re only filing in the U.S. and have no foreign applications, this option won’t apply to you.

Option 4: Petition to Make Special

Certain inventions and situations allow you to file a Petition to Make Special, which moves your application to the front of the line.

These categories include:

• Age-based petitions

• If any inventor is 65 or older, the application can be made special.

• No fee required.

• Health-based petitions

• If an inventor has serious health issues that may prevent them from assisting with prosecution, the application can be made special.

• Requires medical documentation.

• Technology-based petitions (no fee required)

• Inventions that enhance environmental quality.

• Development of energy resources (e.g., hydrogen fuel, solar, nuclear energy).

• Anti-terrorism inventions.

• Disease-based petitions

• Inventions related to HIV, cancer, superconductivity, recombinant DNA, and similar fields.

• Litigation-based petitions

• If the patent application is involved in active litigation, you can petition to make it special.

• There is a fee:

• $35 for a micro entity

• $70 for a small entity

• $140 for a large entity

You can find more details in the Manual of Patent Examining Procedure (MPEP) Section 708.

Final Thoughts

If you qualify for any of these expedited examination options, it’s worth considering whether the extra cost or effort is justified.

• If you believe your invention has a high likelihood of being granted a patent, and having an enforceable patent quickly will benefit your business (e.g., licensing or investor opportunities), then paying the extra fee for Track One might be worth it.

However, getting your application examined quickly is just one part of the process. The real goal is to get a patent allowed as fast as possible.

• A fast-tracked application won’t help if it’s written poorly or if you don’t respond well to examiner rejections.

• To improve your chances, you should:

• Draft a well-written patent application.

• Respond quickly to examiner comments.

• Conduct patent examiner interviews to find common ground.

• Know how to amend your claims to secure an allowance.

I’ll cover these topics in more detail in future episodes. I’m Adam Diament, and until next time, keep on inventing!