A New Way to Obtain your Patents Faster

The America Invents Act creates a new way for inventors to shorten the time it takes to obtain a patent.  This is called Prioritized Examination.  Under the PE program, an applicant pays an extra $4800 fee ($2400 for small entities) and the USPTO commits to mailing the first office action within 4 months.  Once the applicant receives the first office action, it is up to the applicant to continue to speed up the process by responding quickly.  No extensions of time are permitted under the PE program, and the program is not available for Reissue or Reexam applications.   The USPTO commits to final disposition of the application within 12 months.  The program is also available immediately.  However, there is a catch.  The PE program is limited to the first 10,000 requests during the fiscal year. 

Accelerated Examination is also still an option, as the America Invents Act does not change the AE program.  The AE program also promises results within 12 months.  Under the AE program, the turnaround time is one month for non-final office actions.  The AE program includes an extra fee of only $130.  However, under the AE program, an applicant must submit a pre-examination search document and an accelerated examination support document.  These documents are comprehensive and illustrate how the claims of an AE application are allowable over known related art.  Accordingly, the AE program requires significant time searching and analyzing the prior art before filing the application.   

Both the PE program and the AE program are viable options, and strategic reasons could exist for pursuing either option.  The PE program, even with the increased filing fee is probably a cheaper option due to the added time which must be spent by the practitioner preparing to file under the AE program.  The PE program prioritizes examination (four months to first office action and three months to respond) while the AE program prioritizes and accelerates examination (application taken up within two weeks and one month to respond to non-final office actions), however, both the PE program and the AE program promise results within 12 months of filing.  Additionally, the AE program could result in claims of an issued patent which are stronger and won’t easily be invalidated during litigation because they were thoroughly reviewed against the most relevant prior art.

For more information or answers to any questions you may have, please contact us at Woodard, Emhardt, Moriarty, McNett, & Henry LLP.