Patent Office Now Allows First-Time Filers to Expedite Patent Applications for Free

Photograph of cliff at City of Rocks in Idaho
City of Rocks in Idaho

In March 2023, the Patent Office launched a new First-Time Filer Expedited Examination Pilot Program.  This program speeds up the examination process for patent applications filed by certain applicants.

Patent applications take a long time for review.  According to USPTO pendency data updated as of June 2023, the Patent Office takes on average 16.9 months to even start reviewing a patent application.  So after you file a patent application, you will typically sit and wait for almost a year and a half to get any sort of substantive review of your patent application.

Previous Methods to Expedite Patent Prosecution

There are ways to speed examination up.  First, the Patent Office has had a program Track One Prioritized Examination program.  This program is essentially pay-to-play: you can fork out about $2,000 ($4,000 for large entities) and fill out a one-page form, and the Patent Office will put your application in a special queue.  Usually, the Office reviews these applications in about 3-6 months.

Alternatively, inventors over the age of 65 can expedite patent examination for free.  While most clients don’t love to acknowledge that they are 65 years old or older, they do appreciate the perks at the Patent Office.  There are certain requirements for how to recordkeeping and the form of the request, but the main rule is that at least one of the inventors must be 65 or older.

There are a few other ways to expedite patent prosecution, but they mostly relate to the subject matter of the patent.

Expedited Examination For First-Time Filers

The expedited examination pilot program speeds up the time to a first office action.  At this point, just 3 or 4 months after the program began, it is too early to tell how long the Office will take on average to review applications.  I am actually unaware of any applications that have been reviewed under this program.

However, based solely on the fact that applications expedited under Track One or on the basis of age typically receive examination about 3-6 months, I would expect applications under this new program to have similar timelines.

The program is only open to the first 1,000 applications, or until March 11, 2024, whichever is first.  However, not many applicants are using the program; I recall seeing that only a dozen or two dozen applications have been filed under the pilot program so far.

Program Requirements

To qualify for the First-Time Filer Expedited Examination Pilot Program, the following criteria must be met:

  • The inventor is not a named inventor in any other nonprovisional patent application. If there are multiple inventors, none of the inventors can have been named in another nonprovisional patent application.
  • The applicant and inventor (or joint inventors) qualify for micro-entity status. Very generally, this means neither the applicant nor the inventor can have made more than about $212,000 (the exact income limit is available here).
  • The inventor (or joint inventors) are “reasonably trained” about the patent application process at the USPTO. You can do that by reading my blog and my information on patent law!
  • The patent application must be complete and include a specification, drawing, claim, declaration, and payment of all necessary fees.
  • The patent application must be filed electronically using Patent Center, not EFS-Web.
  • The specification must be submitted in DOCX format. I have serious issues and concerns about filing a patent application in DOCX format and do not recommend it except in very limited circumstances.

Because some who will be drawn to this program will inevitably be filing on their own (which I warn about here), note that you do not have to make the request for entry into the pilot program at the time of filing.  Rather, you can file a normal application, wait for your filing receipt to confirm you have filed the application correctly, and then request expedited examination.

More details regarding the program procedures and requirements may be found in the 2023 Federal Register notice for this program.  If you have any questions about the First-Time Filer Expedited Examination Pilot Program, or if you have questions about patent law and patent applications in general, please contact Phoenix patent attorney Tom Galvani today.

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