By Jill Link
As discussed in a series of prior postings, there are various options to expedite examination and/or decrease the pendency and delays associated with patent examination before the United States Patent and Trademark Office (USPTO). These include: (1) the First Action Interview Pilot Program (see Part 1); (2) Track One Prioritized Examination (see Part 2); (3) Accelerated Examination (see Part 3); (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.
Patent Prosecution Highway and Petitions to Make Special are discussed in this posting.
The Patent Prosecution Highway (PPH)
The PPH program is available to patent applicants with foreign patent applications and is a mechanism to expedite the search and examination before either the USPTO or certain participating foreign countries. The PPH program does not guarantee a final disposition within a certain period of time; instead the program allows a USPTO Examiner to rely on the work (i.e. search and examination results) from an examiner in another country which has issued the same patent application. The requirement is that the U.S. patent claims be substantially similar to claims that have been found to be either allowable or have received a favorable international search report.
To utilize the PPH program, a request must be submitted prior to initiation of U.S. examination. The request must provide the examiner with the relevant search and examination results and there are no government fees associated with the request. When this is done it is customary to receive a first Office Action within 3-6 months. Notably, use of the PPH program does not guarantee the U.S. examiner will issue the case (as laws differ between countries); however, providing this information can improve the odds (and pace) of receiving a U.S. patent.
Further detail of the PPH and its use for fast-tracking examination is available at the USPTO website.
Petitions to Make Special
The remaining two options for patent applications to expedite examination before the USPTO are only available to select applicants. These include a subject matter based qualification and an age and/or health based qualification. The petitions include: (1) Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (2) Petitions to Make Special Based on Applicant’s Health and/or Age.
(1) Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism
The first petition relating to the subject matter of a patent application allows the application to be advanced out of order for examination and is treated as "special" throughout the examination by virtue of the fact the invention relates to enhancing environmental quality, relates to conservation of energy resources and/or counter terrorism. There are no guaranteed time frames for a final disposition by using this form of petition; however, they are generally handled on an "expedited" basis. Such a petition is filed with the application and does not require an additional government filing fee. However, the petition must be accompanied by an Accelerated Examination (AE) Pre-Examination Search Document and an AE Examination Support Document. Further detail of the petition requirements is available at the USPTO website.
(2) Petitions to Make Special Based on Applicant’s Health and/or Age
This petition available based on the age and/or health of an inventor also advances the application out of turn and receives "special" treatment before the USPTO. Again, there is no assured timeframe for receiving a final disposition, however the goal is that they are handled in an expedited matter to ensure the patent applicant is able to participate in the examination of the patent application. To qualify, a patent applicant must show evidence they are 65 years of age or older and/or demonstrate their health is insufficient to allow their assistance in prosecution of an application pursuant to "its normal course." There are no additional government fees to file this petition, nor are there any requirements to file exanimation search and/or support documents. Those filing petitions are reminded that any information filed to show support for one's age and/or health will become public (unless filed pursuant to secrecy measures). Further detail of the requirements for Accelerated Examination is available at the USPTO website.
Patent applicants in need of promptly examined and issued patents may find value in these various programs discussed in this 4-part series. However, the decision to utilize any of the programs should be discussed with your patent attorney.