In a recent report from the United States Patent and Trademark Office (USPTO), the average first action pendency of a patent application for fiscal year 2008 was 25.6 months (up from 25.3 months in fiscal year 2007), and the average total pendency of a patent application for fiscal year 2008 was 32.2 months (up from 31.9 months in fiscal year 2007). For applicants who need a faster response from the USPTO, there is an accelerated examination program that allows examination of a patent application to be advanced out of turn and completed within 12 months of the filing date of the application. The catch is that the applicant must actively participate in the examination process.
Not all applications are eligible for the accelerated examination program. In general, any non-reissue utility or design application filed under 35 USC §111(a) is eligible for the accelerated examination program. Applications made special based on applicant’s health or age or filed under the patent prosecution highway (PPH) pilot program are not eligible. Other ineligible applications include plant applications, reissue applications, reexamination proceedings, and national stage applications. Typically, these applications are ineligible for mundane reasons such as not being filed via EFS-Web (the USPTO’s electronic filing system) or containing colored figures.
To participate in the accelerated examination program, the applicant must file a patent application (as described above) and a petition to make the application special under the accelerated examination program on the same day. The application and petition must be filed electronically via EFS-Web. The application cannot contain more than three independent claims. The application cannot contain more than twenty claims in total. The application must be for a single invention, or the applicant must agree to elect a single invention for prosecution on the merits without traverse in a telephonic interview. The applicant must agree to have an interview with the examiner when requested by the examiner. The applicant must conduct a pre-examination search and provide an accelerated examination support document.
Many patent practitioners buck at the requirements of the pre-examination search and accelerated examination support document for the simple reasons that no practitioner wants to willingly or inadvertently create a prosecution history estoppel or be accused of inequitable conduct for failing to cite a reference deemed relevant to the question of patentability. However, there may be instances when taking such risks can be justified.