BY DAVID A. BOAG | BOAG LAW, PLLC
Securing a patent for your new idea can be a long game. Applicants can expect to wait 20 months or longer before an examiner reviews the application.
The reason is simply one of numbers. A staff of about 8,176 examiners are tasked with examining a backlog running 765,000 applications deep. Tens of thousands of new applications are filed and added to the queue each month—November 2023 alone saw 50,053 new applications.
So how do you get in front of this and keep things moving?
Take Track One
The USPTO’s “Prioritized Patent Examination Program” (colloquially known as Track One) allows applicants to move to the front of the examination queue. Applicants taking this path can expect a first review in 2-3 months and a final disposition (i.e., allowance or rejection) in “about” 12 months.
In fast-moving industries, Track One can be critical to getting an edge against competitors as well as attracting investors.
Cutting the line will cost you $1-4K in additional filing fees and is limited to 15K applications per year. Track One status must be requested when you file your application and you’ll lose that status if you ask for any extension of time along the way.
First Time Filer? The USPTO Has a Program for You
If you are a first-time filer, you might be eligible for free fast track status under the aptly-named First-Time Filer Expedited Examination Pilot Program. The program is part of a USPTO effort to increase accessibility to the patent system for new inventors and those in historically underserved geographic and economic areas.
To qualify, each inventor or joint inventor cannot be named as an inventor on a prior nonprovisional patent application, and must qualify as a Micro Entity for fee purposes.
The USPTO will accept petitions to expedite under this program until March 11, 2024, or until 1,000 patent applications have been granted special status under this program, whichever occurs earlier. As of today, just over 100 applicants have taken advantage of the program.
Respond to Office Actions Quickly
This one is easy. Applicants have 2-3 months to respond to rejections and other notices from the patent examiner, with extensions available. By responding to those office actions quickly, you can reduce how long your application is under review (and save yourself on extension fees).
Talk With Your Examiner
Having your attorney schedule a call with the patent examiner (known as an interview) is one of the best ways to accelerate the resolution of your application.
Examiner interviews help clarify the issues. Your attorney can better understand the examiner’s concerns, discuss proposed amendments, and discuss the relevance of prior art. You can narrow the issues and get the examiner’s perspective while at the same time build rapport with the examiner that can be beneficial for future interactions (perhaps even on subsequent applications).