Applying for a patent in the United States is a lengthy process. It takes an average of 22 months from filing of a patent application to initial examination. In recent years, in order to speed up examination, the US Patent Office has launched a series of accelerated examination procedures, including accelerated examination, priority examination, patent examination highway, first instance interview, etc. In addition, in the general application process, meeting with the examiner will also expedite authorization. These procedures are introduced one by one below:
1. Accelerated Examination? (Accelerated? Examination)
The United States Patent and Trademark Office provides accelerated examination procedures to speed up the examination process of certain applications. Accelerated examination applies to invention patent and design patent applications?. To apply for accelerated examination, the applicant must first submit a request for accelerated examination and pay the corresponding fee. Secondly, the patent application itself and the subsequent examination process must meet the following requirements:
1. The total number of claims shall not exceed 20, the number of independent claims shall not exceed 3, and there shall not be multiple cited subordinate rights. Requirements; 2. All claims must be directed to one invention; if the US Patent Office believes that the claims include multiple inventions, the applicant must select one of the inventions without objection; 3. When submitting the patent application, the applicant must Pay all fees, such as application fees, search fees, examination fees, etc., and must submit all documents, such as inventor's oath, etc.; 4. The application must be submitted electronically; 5. Agree to meet with the examiner to discuss the patent examination process problems that arise. In addition, the big difference between accelerated examination applications and ordinary applications is that the applicant needs to conduct a pre-trial search for the claims to be submitted, submit a pre-trial search report, and list in detail his search methods, time, etc. Search methods include: search databases, that is, where the search was conducted, such as the US Patent Office database, the Chinese Patent Office database, the European Patent Office database, I?E?E?E literature, etc.; the search technology must also be listed Category; keywords, keyword combinations and search results.
Applicants also need to submit supporting documents for accelerated examination and analyze the search results. The analysis should indicate which claims are disclosed in each existing document. For the existing documents retrieved, explain why each claim is patentable, etc.
Many time periods for expedited review are shorter than for regular review. After a request for expedited examination is approved, the examiner usually begins the examination within two weeks. The examiner may communicate with the applicant by phone to resolve issues with the application as quickly as possible. If the examiner issues an examination opinion, the applicant must respond within 1 month, and this period cannot be extended (in regular examination, the period is generally 3 months and can be extended to 6 months). If the applicant does not respond within 1 month, the application will be considered abandoned and will not be converted into a regular application. Applications should be finalized within 12 months. The so-called final processing includes sending the approval notice, sending the final opinion, the applicant filing an appeal, the applicant filing for continued review, or giving up the application, etc.
According to statistics from the US Patent Office in April 2012, the US Patent Office *** received 4,996 requests for accelerated examination, and of the 3,797 requests that met the format requirements, 3,175 patents were authorized. Moreover, of the 3,175 authorized applications, 1,352 were authorized in the first instance. Expedited examination provides a fast way to obtain a patent with a high approval rate. Its disadvantage is that the applicant needs to do a lot of work, such as pre-trial search, analysis of search results, preparation of supporting documents for accelerated examination, etc.
2. Prioritized Examination (Prioritized Examination Track - "Track One")
The priority examination procedure came into effect on September 26, 2011. The applicant submits a request for priority review by paying an additional official fee of US$4,800 (reduced to US$4,000 from March 19, 2013), and the request is finally processed within 12 months from the date of being granted priority review.
Priority examination is applicable to invention patent applications and plant patent applications with application dates on or after September 26, 2011. Applicants may request priority examination when submitting a continuation application, divisional application, or continued examination. For example, priority review cannot be requested for applications filed before September 26, 2011, but the applicant can file a continuation application, divisional application, or continuation review for the application, and at the same time request priority review. Currently, P?C?T US national phase applications cannot participate in the priority examination process, but the US Patent Office stated that it may make adjustments depending on the implementation of this process. Moreover, if the applicant enters the United States through a “bypass application” (a continuation application under Section 365(C) of the U.S. Patent Law), he or she can request priority examination. Applications claiming foreign priority through the Paris Convention may request priority examination.
Compared with the above-mentioned accelerated examination procedures, priority examination applications require much fewer materials. Applicants do not need to conduct pre-trial searches and do not need to submit supporting documents for accelerated examination. Requesting priority examination must meet the following conditions: the patent application must be submitted electronically; submit a complete application, that is, the complete patent specification, inventor's affidavit, basic application fee, search fee, examination fee, etc.; the application must not exceed 4 Independent claims and a total of 30 claims, which cannot contain multiple referenced dependent claims; submit a request for priority examination and pay the priority examination fee; and there are still quotas for priority examination in the year. The U.S. Patent Office accepts 10,000 applications for priority review each year.
After the priority review request is approved, the application will receive priority review status. If the patent applicant later amends the application to have more than 4 independent claims or a total of 30 claims, or adds multiple referenced dependent claims, the patent applicant will lose the priority examination qualification. Events that lead to the loss of priority examination qualifications also include: requesting continued examination, the applicant requesting an extension when responding to the examiner's opinions or other opinions of the Patent Office, etc.
According to statistics from the US Patent Office, in 2012, the Office received 5,027 requests for priority examination, and 4,610 requests were approved to enter the priority examination process (92). As of December 20, 2012, 4,375 of all approved requests have received first-instance opinions, 2,672 applications have been finalized, and 1,427 of them have been authorized. The average time from the approval of the request to the issuance of the first-instance opinion is 2 months, and the average time to obtain the final processing is 5.32 months.
3. Patent Prosecution Highway (PPH)
Many Chinese companies choose to apply for patents in China first, and then pass the Paris Convention or P?C? T way to enter the United States. In this case, the U.S. application can be expedited by using the Patent Prosecution Highway (PPH).
The U.S. Patent Office and patent offices in many countries, including the Chinese Patent Office, have P?PH pilot projects. The project aims to apply for patents in the same family and require each country's patent offices to recognize each other's examination results, thereby reducing workload. Through the PPH, an applicant can make a request for accelerated examination of a subsequent application in a subsequent office based on one or more claims that are determined to be grantable in the patent application submitted by the office receiving the initial application without paying additional fees.
The Sino-US Patent Prosecution Highway (PPH) pilot project was launched on December 1, 2011, with an original trial period of one year. The PPH pilot project has recently been extended for one year until November 30, 2013. This project is only applicable to invention patent applications, and is not applicable to provisional patent applications, plant patent applications, design patent applications, etc.
Regular PPH applications can be based on the examination results of Chinese applications or PCT applications.
1. Applications that enter the United States through the Paris Convention or P?C?T based on the review results of Chinese applications can use the PP?H procedure in the United States based on the review results of Chinese applications of the same origin.
Applications that enter the United States through the Paris Convention generally require the priority of one or more Chinese applications; or the U.S. application is a PC?T application that enters the U.S. national phase or a bypass application, and the PC?T application requires the priority of the Chinese application. rights; or two applications of the same family in China and the United States both require the priority of a PC?T application, etc. In these cases, if the Chinese application is approved or authorized first, the applicant can use PP for the application in the United States (or the continuation application, divisional application and partial continuation application of the application) based on the review results of the same Chinese application. ?H Process If the Chinese Patent Office determines that at least one claim is grantable, the applicant may submit a request to participate in the P?P?H to the US Patent Office. The authorizable Chinese application cannot be a utility model application. All claims in the U.S. application requesting participation in the P?PH must fully correspond to the claims considered allowable in the Chinese application, or fully correspond after modification. In addition, when the P?P?H request is submitted, the substantive examination of the U.S. application must not have begun.
After confirming that the US application meets the above conditions, the applicant needs to provide the following documents to the US Patent Office to participate in PP?H: (1) Request to participate in P?P?H, and claim corresponding form; (2) Grantable claims and their English translations in Chinese applications; (3) All (related to patentability) examination action notices and their English translations in Chinese applications; (4) If necessary, submit an initial amendment to modify the claims , so that all claims in the U.S. application fully correspond to the grantable claims in the Chinese application. In practice, applicants often submit an initial amendment to amend the claims in the U.S. application so that they correspond to the grantable claims in the Chinese application.
In addition, if a P?C?T application with priority enters the phase in another country (such as Europe or Japan) and is determined to be allowable by the patent office of that country, the applicant can based on the examination in that country As a result, a request to participate in P?P?H is submitted to the U.S. Patent Office. The materials that applicants need to submit are the same as those required to participate in the PPH under the Chinese application requirements.
2. Based on the review results of the PCT application and based on the review results of the previous P?C?T application, the US application of the same family can be required to participate in the PPH?. The application must be an application for a PCT application to enter the U.S. national phase or a bypass application; or an application for another PCT application to enter the U.S. national phase, and the PCT application requires the priority of the corresponding PCT application. U.S. applications that meet the conditions (including continuation applications, divisional applications and partial continuation applications of the application) can participate in the P?C?T-P?P?H project. Common situations are shown in Figures 4 and 5 below: When a PCT application has an international search written opinion (WO/I?SA), international preliminary examination written opinion (WO/I?P?E?A) or international preliminary examination report (I? ?P?E?R), pointing out that the claim has novelty, inventiveness and industrial applicability, and the applicant can submit a request to the US Patent Office to participate in P?C?T-P?PH. All claims of a U.S. application requesting participation in PC? And the substantive examination of the application requesting participation in P?P?H has not yet begun.
Applicants need to provide the following documents to the US Patent Office to participate in P?C?T-P?P?H: (1) Request to participate in P?C?T-P?P?H, and claim correspondence form; (2) Claims in the corresponding P?C?T application that are considered to have novelty, inventiveness and industrial applicability; (3) International examination results (WO/I?SA, WO/I?P?E?A or I ?P?ER); (4) If necessary, submit an initial amendment to amend the claims so that the claims in the US application correspond to the claims in the P?C?T application that are considered to have novelty, inventiveness and industrial applicability.
3. PPH? Effect: The US Patent Office usually reviews and approves a P?P?H? request within two months of submission. Once approved, the application will receive priority review. The examiner usually begins the review within two to three months of P?P?H approval.
The obvious advantage of the P?P?H project is that free P?P?H requests receive priority processing at the patent office and have a high grant rate. According to statistics from the US Patent Office in September 2011, among P?P?H applications based on prior examination results in other countries (including China), the first examination notice was issued in about 6 months, and the grant rate was about 87 . In P?P?H applications based on P?C?T's previous examination results, the first examination notice is issued in about 4 months, and the authorization rate is about 93. The application authorization rate for non-P?P?H projects is only 48. At the same time, the number of times applicants respond to notices is reduced, and the application cost is greatly reduced. For the above two types of P?P?H, the average number of rejection notices issued by the US Patent Office was 2.13 and 1.61 for each application respectively, while for non-P?PH applications it was 2.51. The probability of an applicant requesting continued review dropped from 31 for non-PPH applications to 11, and the probability of an appeal dropped from 2.5 to 0.3. The US Patent Office estimates that for an application with particularly complex technology and high cost, the applicant can save approximately US$8,218 and US$10,163 respectively through the above two PP?H projects.
4. First Action Interview Pilot Program
The first action interview is another procedure designed to speed up the review and authorization of applications. The applicant may request to meet with the examiner to discuss the patentability of the application after the application is submitted but before substantive examination. The examiner must complete a meeting with the applicant before issuing a first-instance opinion. The meeting can be by phone or in person at the Patent Office. If this procedure is used correctly, the applicant can quickly obtain the examiner's review opinion, thereby expediting the granting of the patent application.
The first-instance interview procedure only applies to invention patent applications, but not to design patent and plant patent applications. Invention patent applications that apply to participate in the first-instance interview process must meet certain requirements. For example, the application must not contain more than 3 independent claims, and the total number of claims must not exceed 20. If the application does not comply with these provisions, the applicant may delete redundant claims through an initial amendment. ?At the same time, the claims of the application can only contain one invention. If the Patent Office determines that the claims in the application include multiple inventions, the applicant must select the claim corresponding to one of the inventions without objection.
The request for a first-instance meeting must be submitted as early as possible, and no later than one day before the first-instance opinion letter for substantive examination is issued. If the request meets the requirements, the examiner will send a pre-meeting communication including cited references, brief analysis, etc. The applicant then submits a written request for an interview. During the meeting, the applicant can discuss with the examiner the content of the pre-meeting communication. The applicant may also send claim amendments to the examiner and discuss them during the meeting. If the examiner believes that the revised claims can be granted, the applicant can formally submit it to the Patent Office; if the examiner believes that the revised claims are still not grantable, the applicant can propose other modifications. After the meeting, the applicant can submit an examination response to further modify the claims based on the results of the meeting.
The first-instance interview procedure provides applicants with various conveniences. For example, through the first-instance meeting procedure, the applicant can communicate with the examiner before the first-instance opinion, and listen to the examiner’s opinions on novelty and inventive step, or his understanding of cited documents and claims. Based on the results of the first-instance meeting, the applicant may amend the claims in the application to achieve the purpose of accelerating examination and authorization. According to experience, if the preparation is sufficient before the first-instance meeting and the modifications after the meeting are appropriate, the application can often be authorized in the first instance. According to statistics from the US Patent Office, among all applications that participated in the first-instance interview process, 29.4 applications were authorized in the first instance, while only 11.5% of general applications were authorized in the first instance.
The risk of the first-instance meeting procedure is relatively small. It is worth noting that unlike accelerated review, the first-instance interview procedure cannot advance the review date of the application. Applications to participate in the first-instance interview process, like other normal applications, need to be queued for review according to the application submission date.
However, the correct use of the first-instance meeting procedure can speed up the review process and may lead to authorization quickly. Moreover, the first-instance interview procedure can often reduce the number of times the examiner issues rejection opinions, thereby reducing the number of times of replying to letters of opinion and reducing costs.
5. General Examiner Interview
In addition to the special pre-first-instance interview procedure, meetings with the examiner at other times during the patent examination process are crucial to speeding up the trial. And empowerment is very beneficial. Meetings with the examiner can be by telephone or in person. The content of the meeting may include the background technology of the invention, the understanding and scope of the claims, the content disclosed in cited documents, authorizable modifications, etc.
Generally speaking, an applicant can request a meeting with an examiner at any stage of the application. After a final opinion, the examiner can deny a request for a meeting, but many times the request will be granted. A better time to meet is after the first instance opinion letter is issued and before the reply is given. During the meeting, the applicant can ask the examiner to further explain the first instance opinion to understand the examiner’s thinking, and can also clarify the novelty of the patent and convince the examiner. Based on the results of the meeting, the applicant can modify the claims or respond to the examiner's opinion in the reply, thereby most effectively speeding up examination and authorization. Before replying, the applicant can send the proposal to amend the claims to the examiner, and then communicate with the examiner to discuss whether the proposal can be approved, etc., so that authorization can be obtained as soon as possible.
6. Other special applications
The U.S. Patent Office provides accelerated examination channels for certain special applications. For example, if the inventor is 65 years old or above or the inventor is in poor health, he or she can request the patent office to quickly review his patent application. Applicants can also propose to accelerate the application based on the particularity of the invention. For example, the invention can (1) significantly improve environmental quality; (2) make a significant contribution to the development and conservation of energy; or (3) make a significant contribution to the defense of terrorist organizations, etc. Review requirements. These special accelerated review channels are rarely used in practice.
7. Overview
In summary, applicants can apply for accelerated examination, priority examination, examination highway and examiner pre-first-instance meeting, as well as during the general examination procedure and examination. to expedite the authorization of its patent application through meetings with members. The specific method to apply depends on individual circumstances, such as time requirements, business goals, budget, etc., and a specific judgment is made. These methods, if used properly, can reduce the number of times to respond to the examiner's opinions, thereby obtaining authorization quickly, and at the same time saving costs. Especially if you adopt the examination highway, first-instance interview procedure and ordinary examiner interview, there is no need to pay additional application fees.