I can’t figure out how I missed this! If you can satisfy fourteen conditions as a first-time patent application filer at the USPTO, you can get your patent application examined faster.
A Federal Register notice dated March 9, 2023 established this new First-Time Filer Expedited Examination Pilot Program. Maybe the most striking thing about this initiative is that USPTO resources got spent devising a logo for the initiative (quoted above right). To my eye this logo symbolizes what might otherwise have been a fruitful invention, being pulled downwards and pulverized between two gears. To try to get your US patent application examined faster under this program, you file Form PTO/SB/464. This form requires the filer to establish fourteen conditions:
- The inventor or, where there are joint inventors, each joint inventor has not been named as the sole inventor or a joint inventor on any other nonprovisional application.
- The applicant and the inventor or, where there are joint inventors, the applicant and each joint inventor qualify for micro entity status under the gross income basis requirement. Form PTO/SB/15A is or was filed to establish micro entity status.
- The inventor or, where there are joint inventors, each joint inventor named on the application is reasonably trained on the basics of the USPTO’s patent application process. For applicants who are unsure whether they meet this requirement, exemplary patent application training resources that could be used to meet this requirement are available at https://www.uspto.gov/FirstTimePatentFiler.
- The application:
- is an original, noncontinuing, nonprovisional utility application filed under 35 U.S.C. § 111(a);
- does not claim the benefit of the filing date of any prior-filed nonprovisional application or international application designating the United States;
- does not claim a right of foreign priority under 35 U.S.C. § 119(a)-(d) or (f) to any foreign application; and
- is not entering the national stage under the Patent Cooperation Treaty (PCT) as set forth in 35 U.S.C. § 371.
- Special status has not been previously granted in this application.
- This petition is being filed using Patent Center before a first Office action (including an action containing only a restriction requirement) has issued in the application.
- The application is being or was filed using Patent Center.
- The application is complete under 37 CFR § 1.51. That is, the application includes a specification, drawing(s) if necessary, at least one claim, an oath or declaration, and payment of all appropriate fees (that is, basic filing, search, and examination fees, and an application size fee if required).
- The specification, claim(s) and abstract of the application on filing are being or were submitted in DOCX format.
- The applicant agrees that the application may not contain, or be amended to contain, more than three independent claims, more than twenty total claims, or any multiple dependent claims.
- The applicant agrees that if any joint inventor is added to the application after a petition has been granted under this program, the applicant must certify (for example, on a separate letter) that the added joint inventor(s) meet(s) the criteria in items (1) – (3) above.
I perceive an anti-foreigner bias in this initiative. Among other things, an applicant is rendered ineligible under this initiative if the application:
- claims the benefit of any prior-filed international patent application, or
- claims priority from any foreign patent application, or
- is a entry into the US national phase from an international patent application.
I predict that very few applications will gain expedited status under this initiative. I note that according to the USPTO’s web page for this initiative, a whopping four US patent applications have been granted “special” status between March 9, 2023 and May 2, 2023 under this program.
3 Replies to “First-time filer expedited examination”
Regarding anti-foreigner bias, note that the requirements also preclude the application from claiming the benefit of the filing date of a US nonprovisional. See requirement 4.2. So the only anti-foreigner bias is that a qualifying application can claim benefit to a US nonprovisional application. In any case, the requirements do not violate U.S. treaty obligations under the Paris Convention For the Protection of Industrial Property articles 2 and 3 (Equality of “National Treatment” for nationals whose nations are members of the Paris Convention)
Thank you for commenting. I am pretty sure I am failing to follow your comment. Requirement 1 already says that no inventor on the present (candidate for expediting) application is permitted to have been an inventor on any other “nonprovisional application”. Then we turn to Requirement 4.2 which says the present (candidate for expediting) application is not permitted to “claim benefit” from any earlier application; given the use of “benefit” in that requirement rather than “foreign priority” makes clear that Requirement 4.2 is talking about 35 USC section 120. In other words the Requirement 4.2 is forbidding use of 35 USC section 120 in the present (candidate for expediting) application. Given that 35 USC section 120 requires “at least one inventor in common” between the two applications, this Requirement 4.2 seems to add nothing beyond what is already imposed by Requirement 1. A further redundancy may be seen in Requirement 4.1 which says the present (candidate for expediting) application is required to be a “noncontinuing” application. (To be a “continuing” application it would have to have an inventor in common with some earlier non-provisional application, which is already forbidden by Requirement 1.)
The program’s restrictions are quite Draconian. There is no provision to withdraw. The benefits of the expedited examination end once the first office action is issued, but the restrictions continue throughout prosecution of the application. An amendment adding enough claims to exeed the 3/20 thresholds will be treated as non-responsive or even non-bona fide. If an applicant really needs more claims, they would have to file a continuation. The FR notice doesn’t say what happens if it is necessary to add an inventor who does not satisfy the restrictions (despite having agreed not to do so); presumably a continuation would be required in that case, too.