The patenting process can take years to complete. As an inventor or entrepreneur, the last thing you want is for your intellectual property to be caught in United States Patent and Trademark Office (USPTO) limbo. Fortunately, there are many ways to expedite the patenting process, one of which is a “patent application special status”. Below, you’ll find a comprehensive guide to each method of obtaining a patent application special status for your IP.
What Is A Patent Application Special Status?
A patent application special status essentially flags your patent application as “high priority” with the USPTO. Applicants must create and submit a formal request asking that their patent application be examined before other pending applications to achieve this status. There are a few programs available through USPTO that utilize special statuses to accelerate the patenting process. Or, petitions exist that may grant your patent application special status based on the circumstances surrounding the inventor or the IP itself.
Do I need a patent application special status?
While some means of expediting your patent application are strict in eligibility, others are offered to nearly all applicants. Common reasons to seek patent application special status include attracting investors or determining international filing requirements regarding the Patent Cooperation Treaty. Start-up companies may seek patent application special status for their IP because long delays can be costly for the business. Most inventors find the patent process inconveniently lengthy and may seek patent application special status on that basis alone.
Petitions to Make Patent Application Special Status
First, let’s cover each petition the USPTO offers for obtaining patent application special status. If you’re concerned that none of the options listed below will work for your IP, don’t sweat it. We’ll address some alternative methods for expediting your examination next. To make patent application special status, IP or applicants must fall into one of the following categories:
- The IP is of particular importance to a branch of public service. The department head of the corresponding government branch must request immediate action for this reason.
- The applicant’s age or health is subject to time constraints.
- The IP will materially enhance the quality of the environment, contribute to the development and/or conservation of resources, or counter-terrorism.
There is no set timeline for granted petitions to make special. Instead, they move through the patent application process on a case-by-case basis.
Petition to Make Special Based on Enhancing Environmental Quality or Contributing to the Development or Conservation of Energy Resources
Special status may be awarded to patent applications for inventions that contribute to environmental quality by maintaining or restoring essential natural elements. This type of petition is also available to inventions that contribute to the discovery, development, conservation, or more efficient utilization of energy resources, like wind power and solar energy.
Expert Guidance: Strongly recommended. A petition to make special based on the above requirements must prove that the invention serves its purpose under the requirements outlined in MPEP § 708.02(a.).
Petition to Make Special Based on Applicant’s Health and/or Age
The USPTO may grant your IP patent application special status if the petition is accompanied by proof that the state of the health of the inventor may inhibit them from participating in the normal patent application process. Evidence may be in the form of a medical certificate. Those seeking special status based on their age must be at least 65 years of age or older. A registered practitioner must confirm age.
Expert Guidance: Recommended. Those who do not wish to submit personal or medical information may submit this type of petition according to MPEP § 724.02.
Petition to Make Special Based on Contributing to Countering Terrorism
USPTO accords special status to patent applications that can demonstrate their ability to materially contribute to countering terrorism.
Expert Guidance: Strongly recommended. Petitions of this nature must effectively establish the requirements outlined in MPEP § 708.02(a.). Further, they must align with the definition of terrorism as defined in 18 U.S.C. 2331.
Alternative Routes to Expediting Examination
Fortunately, petitioning for patent application special status is not the only way to expedite the patenting process. The USPTO offers several alternative methods which Bold Patents has outlined in the next few sections. A price range, timeline, and eligibility check has been included for every program. However, potential applicants should feel free to reach out to us for a free 20-minute Discovery Call to validate their decision. Compared to the months-long delays a wrong move in the patent process could cost you, it’s safe to say it’s worth it.
One way to obtain patent application special status is through the accelerated examination (AE) program. This program is applicable for any non-reissue utility or design application filed under 35 USC §111(a.). To qualify for accelerated examination, applicants must submit an AE request with an initial or continuing patent application filing and the following 2 documents:
- AE Pre-Examination Search Document. An information disclosure statement will accompany a pre-examination search document. It outlines your search logic for the USPTO to review.
- AE Examination Support Document. Examination support documents demonstrate the uniqueness of your claims compared to any pertinent prior art uncovered in your search. All claims referenced in your information disclosure statement must be addressed in your AESD.
NOT ELIGIBLE FOR AE: Plant applications, RCE filings, reexaminations, petitions to make special based on age or health, PPH pilot program applications, or those entering the national stage post-international proceedings.
Fees: $140 for regular entities, $70 for small entities, or $35 for micro-entities. Search fees not included.
Approximate Timeline: Final dispositions within 12 months from the date your Priority Examination (PE) request is granted.
Expert Guidance: Strongly recommended. Conducting a thorough patent search and ensuring your search documents contain all the information required can be an arduous process. An IP expert or attorney will reduce your chances of denial.
Prioritized Patent Examination Program
The prioritized examination (PE) route is also referred to as “Track One.” The USPTO only grants 10,000 PE requests per fiscal year; online filing will be disabled once the limit has been reached. To qualify for PE, you must make your request simultaneously with one of the following three filings:
- Initial patent application
- Continued patent application
- Request for Continued Examination
Applications must have no more than 4 independent claims and 30 total claims throughout pendency. The USPTO recommends Track One applicants file a certification and request form to ensure their request is processed promptly.
Fees: $4,000 for regular entities, $2,000 for small entities, or $1,000 for micro-entities according to 37 CFR 1.17(c.).
Approximate Timeline: Final dispositions within 12 months from the date your PE request is granted.
Expert Guidance: Recommended. An IP expert or attorney can help you determine which fees you’ll be responsible for, track deadlines, and prepare the necessary correspondences between you and the Office of Petitions. Missed deadlines will result in your application’s removal from the PE program.
COVID-19 Prioritized Examination Pilot Program
The COVID-19 Prioritized Examination Pilot Program is accepting requests filed in qualifying patent applications until midnight on March 31, 2022. To be eligible for this program, applications must contain one or more claims pertaining to a COVID-19 related product or process. Further, the product or process claimed must be subject to Food and Drug Administration (FDA) approval for COVID-19 use. This pilot program is open to non-continuing, original, nonprovisional utility or plant patent applications. It must be filed with a request to participate.
Approximate Timeline: Final disposition within one year of granted prioritized status.
Expert Guidance: Strongly recommended. Eligible applications must adequately demonstrate their relation to COVID-19 usage. Regulatory requirements must also be met in order to file an application for FDA approval.
*Not including the costs of basic filing, search, and examination. The COVID-19 PE Pilot Program is exempt from the prioritized examination fee and the processing fee set forth in 37 CFR 1.17(i.)
Patent Prosecution Highway
The Patent Prosecution Highway (PPH) method differs from the others because it speeds up the application process through corresponding applications. Under PPH, an examiner may rely on search results obtained by another country’s participating patent office or an international search report. To be eligible for PPH, an applicant must:
- Have received a final ruling from the Office of Earlier Examination in which one or more claims have been allowed.
- Have corresponding claims in another pending patent application in a second participating patent office or the Office of Later Examination.
- Examination of your USPTO patent application must not have begun already.
Fees: $0. There are no fees associated with PPH programs.
Approximate Timeline: There is no set timeline for the PPH program. PPH framework aims to expedite the patent process by providing the Office of Later Examination with claims that have been previously deemed patentable by the Office of Earlier Examination.
Expert Guidance: Strongly recommended. Each country has differing IP laws, making the international patenting process complex. An IP attorney or expert can help ensure your IP gets the most comprehensive coverage possible despite a consolidated timeline.
Accelerate the Patenting Process with Bold Patents
Bold Patents helps inventors navigate the patenting process faster and more efficiently. Our team of IP experts and attorneys assist clients from preliminary searches through continuing patent maintenance. Minimize your risk of denials and contact us today.