Accelerating Patent Prosecution in the US

September 08, 2021

We discuss some options for how to speed up your patent application’s progress through the US examination process.

US patent protection is often of interest for businesses and innovators looking to grow their market outside of the UK. A US patent can provide significant value in relation to its cost, especially when looking for investors.

Typically, US patent applications are put into a queue for examination based on their filing date. However, it is possible to move your application up the queue to gain certainty and, in some cases, an early grant.

Petition To Make Special

One way to skip the examination queue is by petitioning to make your application “special”. The US Patent and Trademark Office (USPTO) will examine an application that is made special quickly. They aim for a “final disposition” (usually a notice of allowance or a final office action) within 12 months. In some cases, it will be necessary to continue the examination process beyond this 12-month period (for example, if you wish to file a request for continued examination after receiving a final office action) but the overall timescale will remain shorter than for a non-special application.

In most cases, a successful petition to make an application special requires a fee, but there are cases in which the petition can be filed without a fee. The most notable of these are if the invention can be proved to materially enhance the quality of the environment; contribute to the development or conservation of energy resources; or contribute to countering terrorism.

The fee required to make an application special starts at just over $1000 for a micro-entity as defined by the USPTO. This increases to just over $2000 for a small entity, and just over $4000 for any other entity. In the last 12 months, 52% of applications made special by paying a fee (“Track One” applications) were allowed: see the USPTO website here for more information.

If you want to apply for a US patent and are interested in filing a petition to make your application special via this route, let us know. Our attorneys will draft your application carefully so that it fulfils the requirements set out by the USPTO for being made special, and can discuss whether your application is likely to be successful if filed without a fee.

Patent Prosecution Highway

Another way to move your application more quickly through the examination process is by making use of the Patent Prosecution Highway (PPH) which is available to applicants in several different countries. Under the PPH, if a corresponding application has been found allowable by another patent office, the USPTO will accelerate the application by treating it as an application made special (without payment of a further fee). The PPH is the most cost-effective way of speeding up the examination process in the US as the USPTO does not charge a fee for making use of this system.

Get in touch if you are interested in using the PPH. We can, for example, accelerate timelines in the UK to help you obtain allowance in the UK quickly (for example 6 to 9 months) and then use this allowance to accelerate examination of a corresponding patent application in the US.

If you have any questions concerning this or would like any further information, please get in touch with your usual contact at Swindell & Pearson or Paul Higgin at [email protected].