When Director Kappos wrote on his blog about international worksharing programs, he also provided a summary of current options for prioritized U.S. examination. While most are well-known, it is good to keep all options in mind when prompt examination is important, such as when a commercial product is on the market (or will be within the average 3-5 year pendency time) or infringement is suspected.
Green Technology Pilot Program
The Green Technology Pilot Program is open to “applications pertaining to environmental quality, energy conservation, development of renewable energy, or greenhouse gas emission reduction.”
The application must satisfy the following requirements:
- The application must be a non-provisional utility application (other than a reissue application) that was filed before the December 9, 2009 start date of the program.
- The application must contain (or be amended to contain) at most 3 independent claims and at most 20 total claims, with no multiple dependent claims.
- The claims must be directed to a single invention that materially enhances the quality of the environment, or that materially contributes to (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction. The petition must include a statement that, if the USPTO determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), the applicant will agree to make an election without traverse in a telephonic interview.(The original classification requirements have been eliminated.)
Additionally, the petition to make special must be
- filed electronically.
- filed at least one day before a first Office Action (including a Restriction Requirement) appears in the Patent Application Information Retrieval (PAIR) system.
- accompanied by a request for early publication and the publication fee.
and must include a statement supporting eligibility averring that:
- the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements. It is suggested that the petition be accompanied by a signed statement explaining how the materiality standard is met.
- the invention materially contributes to (1) development of renewable energy resources or energy conservation, or (2) greenhouse gas emission reduction. It is suggested that the petition be accompanied by a signed statement explaining how the materiality standard is met.
Prioritized Examination: Applications in the Green Technology Pilot Program will be placed on an examiner’s special docket prior to the first Office action, and will have special status in any Board appeal and in the patent publication process. However, applications will be placed on the examiner’s amended docket, not the special docket, after the first Office Action.
Termination Date: Unless extended, the pilot program will end on December 8, 2010 or when 3,000 petitions have been granted, whichever is earlier.
“Dump One, Bump One” Pilot Program
The Project Exchange Program (also referred to as the “Dump One, Bump One” program), enables applicants to obtain prioritized examination of a pending application by expressly abandoning another pending application.
In its current form, the program has the following requirements:
- both the application to be prioritized and the application to be abandoned were filed before October 1, 2009.
- both applications were owned by the same party on October 1, 2009, or have at least one overlapping inventor.
- the applicant must file an express letter of abandonment in the application to be abandoned before a first Office Action is issued. The letter must include a statement that “the applicant has not and will not file an application that claims the benefit of the expressly abandoned application.”
(The original small entity requirement has been eliminated.)
Prioritized Examination: Applications in the Project Exchange Pilot Program will be placed on an examiner’s special docket prior to the first Office action, and will have special status in any Board appeal and in the patent publication process. However, applications will be placed on the examiner’s amended docket, not the special docket, after the first Office Action.
Termination Date: Unless extended, the pilot program will end on December 31, 2010 or when 10,000 petitions have been granted, whichever is earlier.
Patent Prosecution Highway (PPH) Programs
The PPH programs are bilateral programs between the USPTO and various foreign patent offices. The programs provide for prioritized examination of a U.S. application if a corresponding foreign application has received a favorable patentability determination.
The requirements for each PPH program are similar:
- the U.S. application and foreign application must meet certain relational and priority requirements.
- the Office of First Filing (OFF) (usually the patent office where the priority application was filed) must have determined that at least one claim in the application filed in the OFF is patentable.
- the claims of the U.S. application must correspond to (or be amended to correspond to) the allowed claims of the foreign application.
- the applicant must submit copies of the relevant foreign search and examination reports and cited prior art references.
- the PPH request and supporting documents must be filed electronically before a first Office Action is issued.
The USPTO now has PPH agreements with the following fourteen patent offices:
Australia, Austria, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Russia, Singapore, Spain, United Kingdom
There also are PCT-PPH programs with Austria, Europe, Japan, Korea, Russia and Spain, which provide for prioritized examination based on a favorable Written Opinion.
Prioritized Examination: PPH applications are subject to special examining procedures throughout their pendency.
Termination Date: Each PPH program has its own expiration date. Some pilot programs are set to expire in 2011 or 2012, but may be extended. The PPH programs with Japan and Korea are “permanent.”
Applicant’s Age or Health
The advanced age or poor health of the applicant is a long-standing basis for obtaining prioritized examination. The following requirements apply:
- To prioritize examination based on advanced age, the applicant must submit “evidence showing that the applicant is [at least] 65 years of age.”
- To prioritize examination based on poor health, the applicant must submit “evidence showing that the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate.”
Prioritized Examination: Applications prioritized on the basis of advanced age or poor health remain on an examiner’s special docket throughout examination, and will have special status in any Board appeal and in the patent publication process.
Termination Date: This is a permanent program with no expiration date.
Accelerated Examination Program
The Accelerated Examination Program offers prioritized examination for applications for which the applicant undertakes certain preliminary examination steps, such as conducting a prior art search and preparing an analysis that compares the closest prior art to the claims.
The specific requirements include:
- filing the application electronically together will all required documents.
- presenting claims directed to a single invention and agreeing to make an election without traverse.
- submitting a description of the pre-examination search parameters.
- submitting copies of the closest prior art references.
- submitting a detailed discussion of the closest prior art references, pointing out with particularity how the claims are patentable over the references.
Prioritized Examination: Applications in the Accelerated Examination are prosecuted in accordance with special procedures, with the goal of completing examination within 12 months.
Termination Date: This is a permanent program with no expiration date.
The Criticality of Prioritized Examination
When filing a new U.S. patent application, the applicant should be aware that the average wait to a first Office Action is over 2 years, and the average time to patent grant (or abandonment) is about 3.5 years. If this timeframe does not fit with the applicant’s business plan, would undermine important goals and objectives, or would leave the applicant with no immediate right to address infringement, the applicant may want to consider whether the application qualifies for prioritized examination under any of these current programs.