Faster grant of US patent : First-Time Filer Expedited Examination Pilot Program

Faster grant of US patent : First-Time Filer Expedited Examination Pilot Program

Introduction

The First-Time Filer Expedited Examination Pilot Program is an initiative by the U.S. Patent and Trademark Office (USPTO) in collaboration with the Council for Inclusive Innovation (CI2). The program is tailored to enhance accessibility to the patent system for inventors who are new to the patent application process, particularly those from historically underserved regions and economic backgrounds. This program accelerates the examination of patent applications, enabling inventors to bring their innovations to market more swiftly.

Objective

The primary goal of this program is to reduce the wait time for the first Office action on a patent application, which is the written notice from an examiner detailing findings such as rejections or restrictions. By expediting this process, the program aims to remove time-related barriers and promote greater participation in the patent system by inventors who may face challenges due to geographic or economic constraints.

Eligibility Criteria

To participate in the First-Time Filer Expedited Examination Pilot Program, inventors and applicants must meet the following criteria:

  1. First-Time Filer Requirement: The program is exclusively for inventors who have never been named as an inventor in a U.S. nonprovisional patent application. If you have been listed as an inventor in a U.S. design patent application, you are not eligible.
  2. Micro Entity Status: Applicants must qualify for micro entity status under the gross income basis requirement. This status is typically granted to inventors with limited financial resources, making the patenting process more affordable.
  3. No Petition Fee: The petition fee under 37 CFR 1.17(h) is waived for this program. However, applicants are still responsible for all other standard application fees, including filing, search, and examination fees.

There is No petition Fee for choosing this option for Expedited Examination Pilot Program

Filing Process

  1. Application Submission: Applications must be submitted electronically via the USPTO’s Patent Center. The specification, claims, and abstract must be filed in DOCX format. Applications submitted via other methods, such as EFS-Web or by mail, are not eligible for this program.
  2. Petition to Make Special: To apply for expedited examination, you must file a petition to make special. This petition can be submitted at any time before the examiner issues the first Office action. However, it is advisable to file the petition after confirming that your application is complete under 37 CFR 1.51(b). An incomplete application will result in the dismissal of the petition without an opportunity for correction.
  3. Ensuring Completeness: Before filing the petition, ensure that your application includes:
    • A complete specification
    • Necessary drawings
    • At least one claim
    • An oath or declaration for each named inventor
    • Payment of all required fees
  4. Timing of First Office Action: Once your application is granted special status and docketed to an examiner, you can expect to receive a first Office action within 28 days.

Program Duration

The First-Time Filer Expedited Examination Pilot Program began on March 9, 2023, and has been extended to March 11, 2025, or until 1,000 petitions are granted, whichever occurs first.

Program Impact and Alignment

This program aligns with Executive Order 13985, promoting equity and diversity in innovation. It reflects the USPTO and CI2’s commitment to broadening access to the patent system, especially for underrepresented groups.

Benefits of the First-Time Filer Expedited Examination Pilot Program

The First-Time Filer Expedited Examination Pilot Program offers several significant advantages for inventors and applicants, particularly those new to the patent system. By participating in this program, applicants can enjoy the following benefits:

  1. Accelerated Examination Process:
    • The most prominent benefit of the program is the expedited processing of the patent application. Typically, the time to receive the first Office action from the USPTO can extend over several months to more than a year. Under this program, the first Office action is expected within 28 days after the application is granted special status and assigned to an examiner. This swift response can significantly reduce the overall time to secure a patent.
  2. Early Feedback on Patentability:
    • Receiving a quicker first Office action provides early insights into the patentability of the invention. This early feedback allows inventors to assess the strengths and weaknesses of their application, make necessary adjustments, and respond to the USPTO more efficiently, thus streamlining the entire patenting process.
  3. Cost-Effective Filing:
    • The program waives the petition fee under 37 CFR 1.17(h), making it more financially accessible for first-time filers, particularly those who qualify for micro entity status. This fee waiver, combined with the potential to secure a patent more quickly, can save applicants both time and money.
  4. Faster Market Entry:
    • A quicker grant of a patent means that inventors can bring their innovations to market sooner. This early market entry can be crucial in fast-moving industries where being first-to-market can provide a significant competitive advantage. It also allows inventors to start leveraging their patent rights—through licensing, partnerships, or sales—earlier in the process.
  5. Enhanced Investor Confidence:
    • For inventors seeking investment, a faster patent grant can be a compelling factor in attracting investors. Patents are often viewed as valuable assets, and the ability to secure a patent quickly can enhance an inventor’s credibility and the perceived value of their innovation. This, in turn, can make it easier to secure funding and resources for further development and commercialization.
  6. Legal Protection and Deterrence:
    • Once a patent is granted, the inventor enjoys legal protection against unauthorized use, replication, or commercialization of their invention. Expediting the patent process means that this legal protection is established more quickly, reducing the window of time during which competitors might attempt to exploit the invention without consequence.
  7. Contribution to Inclusive Innovation:
    • By participating in this program, inventors from historically underserved communities or those with limited resources can overcome traditional barriers to entry into the patent system. This aligns with broader efforts to foster equity and diversity in innovation, ensuring that a wider range of voices and ideas are represented in the marketplace.
  8. Strategic Advantage:
    • Early receipt of a patent grant can provide a strategic advantage in negotiations, whether for licensing deals, partnerships, or defending against potential infringement. A granted patent solidifies the inventor’s position and can be used as a powerful tool in various business scenarios.
  9. Better Resource Allocation:
    • With a faster response time, inventors can make more informed decisions regarding the allocation of resources. Whether to continue investing in the patent application, pivot based on feedback, or focus on other projects can be determined more quickly, allowing for more efficient use of time and capital.
  10. Confidence in Moving Forward:
    • Knowing that their application is being expedited gives inventors the confidence to proceed with other aspects of bringing their invention to market, such as developing prototypes, conducting market research, or securing partnerships, without the uncertainty of a prolonged patenting process.

By opting for the First-Time Filer Expedited Examination Pilot Program, you can enjoy these substantial benefits, ensuring that their innovative ideas receive the protection and recognition they deserve in a timely manner.

Additional Resources

  • Webinar: To learn more about this program, you can view a recording of the USPTO’s webinar discussing the initiative.
  • FAQs: For detailed information, refer to the frequently asked questions (FAQs) section on the USPTO’s official website at www.uspto.gov/FirstTimePatentFiler.
Prasad Karhad
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