Recently I blogged about what it might cost to get a US patent fast using Track I or Accelerated Examination or due to age or health of inventor. Here is another blog posting, this one about getting a US patent fast using Rule 496.
Some practitioners know about 37 CFR 1.496 (“Rule 496”). Rule 496 details a situation in which a US patent application that is the national phase of a PCT application will be “advanced out of turn for examination.” What should a practitioner charge for getting a case “advanced out of turn” under Rule 496?
For a case to get “advanced out of turn” under Rule 496, what needs to have happened previously is:
- in the PCT application, the applicant picked ISA/US (picked the USPTO to be the International Searching Authority), and the ISA/US established a Written Opinion (“WO”) finding at least one claim to be patentable, or
- in the PCT application, the applicant picked IPEA/US (picked the USPTO to be the International Preliminary Examining Authority), and the IPEA/US established an International Preliminary Report on Patentability (“IPRP”) finding at least one claim to be patentable.
With either of these happy results, the applicant would then enter the US national phase. The search fee payable would be zero, and the examination fee payable would be zero.
With the US national phase having been entered, and with these two “zero” fees having been paid, there should be no further need for the practitioner to do anything. What should happen is that the USPTO should “advance” the case “out of turn”.
Unfortunately, USPTO has no actual internal mechanism for fulfilling this obligation. Nothing in USPTO’s Case Management system, for example, communicates to the Examiner the obligation to take up the case “out of turn”. So it falls to the practitioner to badger the USPTO. When the national phase papers are initially filed, the practitioner may find it necessary to telephone the PCT Help Desk to nudge the DO/EO/US office to mail a Filing Receipt. Once the case is released to the Examining Corps, the practitioner may find it necessary to telephone the SPE of the Art Unit to ask for an Examiner. Once the case gets an Examiner, the practitioner may find it necessary to telephone the Examiner to inform the Examiner of the obligation to take up the case “out of turn”.
Keep in mind that Rule 496 only works if the claims presented in the US national phase were all treated favorably in the WO or IPRP. In other words, if the WO or IPRP found less than all of the claims to be patentable, then in the national phase the practitioner would need to amend the claims to cancel the claims that were not treated favorably in the WO or IPRP.
For all of these reasons, I suggest that a practitioner undertaking to get a case taken “out of turn” under Rule 496 might wish to charge $500 or more. This is above and beyond the ordinary charges for entry into the US national phase.
Note that if a case is eligible for Rule 496, it is probably also eligible for PCT-PPH. So it may be in the client’s interest to invoke not only Rule 496 (which is tied to the zero search fee and zero exam fee) but also PCT-PPH.
Note that the second path to Rule 496, namely obtaining a favorable result from IPEA/US, is unlikely to be a wise path to follow. In recent years IPEA/US has consistently failed to establish its IPRP until well after the 30-month date. In other words, the IPRP, even if favorable, would probably arrive far too late to do any good in reducing the search fee or the examination fee.
What do you think about what it should cost to make use of Rule 496? (Separate and apart from the cost to enter the US national phase.) Please post a comment about this.