Are There Ways to get Your Patent Application Examined Earlier?

Soody Tronson

Soody Tronson

by Soody Tronson at Soody Tronson Law Group

In considering the information below (available from USPTO website and its perspective of course), please keep in mind that it is a general collection of programs, and that there are many pros and cons and nuances in determining whether any of these are either applicable or beneficial to your situation.

Patent Law is a complex area of law and requires in depth evaluation of your strategy. It is advisable to consult an expert in making any critical decisions that are critical to the success of your business.

USPTO Procedures

USPTO has established procedures under which the examination of a patent application may be accelerated and advanced out of turn.

The previous and traditional grounds for expedited examination included: patent applicant’s health or age; the existence of an allegedly infringing product; recombinant DNA, HIV/AIDS, cancer and biotechnology applications filed by small entities are grounds for expedited examination for applications filed before August 25, 2006. MPEP 708.02.

Peer to Patent Pilot Program

In October 2010, the USPTO announced expansion of its Peer to Patent Pilot Program (PTPPP) to include applications in biotechnology, biopharmaceuticals, and bioinformatics. The PTPPP previously was limited to software and business method applications. Under the PTPPP, the patent application will be advanced out of turn for examination and reviewed earlier. The new pilot started on October 25, 2010, and will continue until September 30, 2011. The notice “A New Pilot Program Concerning Public Submission of Peer Reviewed Prior Art” was signed by Mr. Kappos on December 6, 2010, and provides further details about the pilot program.  The notice can be viewed here and will be published in the Official Gazette on December 28, 2010.

http://www.uspto.gov/patents/init_events/peerpriorartpilotindex.jsp

Green Technology Pilot Program Renewed
In November 2010, the USPTO announced that it would extend its Green Technology Pilot Program (GTPP) for another year. The GTPP expedites review of applications for inventions pertaining to green technologies (applications pertaining to environmental quality, energy conservation, development of renewable energy resources, or greenhouse gas emission reduction).

http://www.uspto.gov/news/pr/2010/10_21.jsp

Project Exchange – Patent Application Backlog Reduction Stimulus Plan

The United States Patent and Trademark Office (USPTO) has a procedure under which an application will be advanced out of turn (accorded special status) for examination if the applicant files a petition to make special with the appropriate showing. The USPTO is providing an additional temporary basis under which an applicant may have an application accorded special status for examination if the applicant is able to satisfy (i) the requirements set forth in the June 24, 2010 Federal Register notice titled “Expansion and Extension of the Patent Application Backlog Reduction Stimulus Plan” and (ii) the conditions sets forth in the November 27, 2009 Federal Register notice titled “Patent Application Backlog Reduction Stimulus Plan,” other than the small entity requirement, which is no longer a requirement.  This temporary procedure will allow applicants having multiple applications currently pending before the USPTO to have greater control over the priority with which their applications are examined while also stimulating a reduction of the backlog of unexamined patent applications pending before the USPTO.  The temporary procedure period has been extended to December 31, 2011.

http://www.uspto.gov/patents/init_events/PatentStimulusPlan.jsp

Accelerated Examination Program

The USPTO has established procedures under which the examination of a patent application may be accelerated. Under one of these procedures, the USPTO will advance an application out of turn for examination if the applicant files a grantable petition to make special under the accelerated examination program. The USPTO is similarly revising the procedures for other petitions to make special, except those based on applicant’s health or age or the PPH pilot program. Other petitions to make special (i.e., based on: manufacture, infringement, environmental quality, energy, recombinant DNA, superconductivity materials, HIV/AIDS and cancer, countering terrorism, and biotechnology applications filed by small entities  MPEP § 708.02 ) will be processed using the revised procedure for accelerated examination. Thus, petitions to make special, except those based on applicant’s health, age, or the  PPH pilot program , will be required to comply with the requirements for petitions to make special under the accelerated examination program as set forth in this notice.

http://www.uspto.gov/patents/process/file/accelerated/index.jsp

Patent Prosecution Highway (PPH) – Fast Track Examination of Applications

Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently.

http://www.uspto.gov/patents/init_events/pph/index.jsp

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