Considerations and Implications of Expedited Patent Examination Initiatives in the US

April 30, 2015

The typical pendency of a patent application in the United States can be between two and five years.

In certain situations, a patent applicant may require or want a more expeditious disposition by the USPTO.

Certain USPTO initiatives for expediting patent examination, which we wrote about in Expedited Examination Options for Patent Applications Filed in the United States, include:

• Prioritized Examination
• Accelerated Examination
• Petition to Make Special
• Patent Prosecution Highway
• First Action Interview Program

Prioritized Examination has recently become an option with a goal for a final disposition within 12 months,  but at a substantial cost in terms of fees. Under the Accelerated Examination program, the costs can be significantly lower, but requires the furnishing of a pre-examination search document and an accelerated support document, which may run the risk of creating prosecution history estoppel.  The threshold conditions can also vary with certain other options.

In pursuing any expedited examination strategy an applicant is well advised to carefully consider both the full costs associated with each option and the potential for undesirable effects, such as prosecution history estoppel.