Acceleration of Patent Examination – Special or Prioritized Examination
by Dave Ream
Federal Rule 37 CFR 1.102 outlines the general process for advancement of patent examination in the U.S. Patent & Trademark Office, and MPEP 708.02, 708.02(a) and 708.02(b) detail specific requirements and processes for advancement or acceleration of patent examination.
As detailed in MPEP 708.02+, there are two basic ways to secure accelerated examination for a US utility patent application – to make the application “Special,” or to qualify the application for “Prioritized Examination”. Examination of the application proceeds a bit differently in each, even though they have the same overall goal of speeding up the examination process.
Making an application “Special” and qualifying for “Prioritized Examination” both require making a request when the patent application is first filed, although for “Prioritized Examination” the request can alternatively or additionally be filed when a Request for Continued Examination (RCE) is filed, but only for one RCE.
There are two ways to make an application “Special” – either pay a petition fee specified in 37 CFR 1.17(h) (currently $140 for large entities), or establish one of the following – a) the inventor is 65 years of age or more or has health issues that would likely prevent the inventor from participating in examination of the application in a normal timeline, b) the invention will materially enhance the quality of the environment, c) the invention will contribute to development or conservation of energy resources, or d) the invention will contribute to countering terrorism.
In the first option for making an application “Special,” where the inventor is 65 years of age or older or is in poor health, the application goes to the head of the Examiner’s queue without any extra fees, there are no constraints on the examination process, and special status continues for the life of the application.
For the other options, where the petition fee under 37 CFR 1.17(h) is paid or the application qualifies under the Environment, Energy, or Countering Terrorism categories, there are constraints on the examination process of a “Special” application that the Applicant must follow.
In particular, the Applicant must prepare an Accelerated Examination Support Document and file the Document with the patent application. The Document must include an exhaustive prior art search report that details 1) the search methodology (including tech areas searched and key words or terms used), 2) prior art documents that were found (including US patent literature, foreign patent literature, and non-patent literature), 3) similarities and differences between each relevant prior art document and the claims, 4) reasons why the claims are patentable over the prior art, and 5) support in the specification for each claimed feature. In addition, during prosecution the applicant is limited in how the claims can be amended and argued. If the claims are amended to include features not covered by the original Accelerated Examination Support Document, then the Document must be updated, or the Examiner may refuse to enter and consider the amendments. The Applicant must also be willing to conduct interviews with the Examiner, and typically the Applicant will have 2 months to respond to an Examiner’s Office Action, rather than 3 months as in normal examination. The total number of claims cannot exceed 20 and there can be no more than 3 independent claims.
This “Special” status, and these constraints on examination, continue for the life of the application, through multiple RCEs. However, the Applicant can eject the application from the accelerated examination program by filing an extension of time when responding to the Examiner. Filing an extension of time to respond to an Examiner’s Office Action is permitted but will terminate the “Special” status of the application and thereafter the application will go into the Examiner’s normal queueing process.
The other way to accelerate examination of a utility patent application is to file a request for “Prioritized Examination” with the application, along with a processing fee under 37 CFR 1.17(i)(1) (currently $140 for large entities) and a Prioritized Examination fee under 37 CFR 1.17(c) (currently $4,000). Although the government fees are substantially greater to qualify for “Prioritized Examination” than to qualify for “Special” status, there is no requirement to file an “Accelerated Examination Support Document”, which can require substantial effort and consequent attorney fees to prepare. Thus, pursuing Prioritized Examination is likely comparable in total cost (government fees and attorney fees), and perhaps less expensive, than making an application “Special” when an Accelerated Examination Support Document is required. There are no examination restrictions except that the total number of claims cannot exceed 30, there can be no more than 4 independent claims, and the Applicant must respond to an Examiner’s Office Action within 3 months (rather than 2 months for “Special” applications). However, as with “Special” applications, filing an extension of time with a response to an Examiner’s Office Action is permitted but will terminate “Prioritized Examination” status of the application and the application will then go into the Examiner’s normal working queue.
There are two other ways in which “Prioritized Examination” differs from accelerated examination of “Special” applications.
First, “Prioritized Examination” is not valid for the life of the application. It is only effective for at most two examination cycles, where an examination cycle is a non-final Office Action and then a final Office Action or Allowance – the very first cycle after the application is first filed, and then optionally one more cycle, after an RCE is filed. The second cycle also requires another set of government fees under 37 CFR 1.17(i)(1) and 37 CFR 1.17(c).
Second, the U.S. Patent & Trademark Office has an annual limit of 10,000 applications that it will admit for “Prioritized Examination”. The Office announces in advance when the limit is close to being reached. After the limit is reached, when filing an application electronically the option to select and pay for “Prioritized Examination” will simply not be available.
In sum, even though the government fees for pursuing “Prioritized Examination” far exceed those for making an application “Special,” the cost of preparing the detailed search report and application analysis required for a “Special” application will likely cover the difference (and require extra time to prepare before filing the application).
Thus, choices between the two can be made based on how much time (and attorney time) are available, and on whether the Applicant would prefer the somewhat more intensive but constrained examination process that comes with “Special” status.
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