“The USPTO has been modernizing its quality assurance programs and IT infrastructure, including the use of new technologies, and providing detailed information about its progress to the public.”
This article was prepared based on interviews conducted with USPTO officials.
According to Strategic Goal 1 of the United States Patent and Trademark Office’s (USPTO’s) FY2020 Performance and Accountability Report (PAR), the USPTO is committed to high-quality patent examination in a timely manner. From submission to approval, the USPTO has established groundbreaking quality assurance programs, metrics, and training programs. It has also established IT modernization programs to improve the overall quality of the office’s work products and processes. These steps have made it possible for the agency to introduce new programs to significantly reduce pendency.
A high-quality patent must adhere to the requirements of Title 35, and to the corresponding and applicable case law. To monitor and drive quality, the Office has been conducting both internal and external stakeholder perception surveys semiannually since 2006. In response to stakeholder feedback, the USPTO is providing detailed data at the technology center level, including filings, pendency, staffing, productivity, and inventory levels.
The efficient institution of the USPTO Patent Quality Assurance program is bearing fruit. The program concentrated on developing and implementing data-driven quality improvement initiatives and training for the patent examining corps. Coherent, dependable, and relevant indicators of quality are governed by an ISO 9001:2008-certified patent examination quality management system. In addition, the USPTO has redesigned the Patents Data Visualization Center.
The USPTO has an ongoing IT modernizing campaign to improve efficiency of the patent examination process, among other things. In January 2020, the USPTO moved its digital assets to cloud infrastructure in order to increase bandwidth capacity, better manage workloads, and speed up connections. Artificial intelligence (AI) and user-centered design are being incorporated into USPTO processes to quickly and more accurately classify patents and send them to the right Technology Centers to be reviewed and finalized. AI also helps the agency to learn from past mistakes and eliminate unnecessary steps that would increase patent pendency.
According to the PAR, the average total patent pendency from filing to grant was 23.3 months. This is significantly less than the average total patent pendency of 35.3 months that was reflected in the PAR just 10 years earlier.
The USPTO offers a variety of programs to expedite patent prosecution, which are described below.
Prioritized Examination Program
The Prioritized Examination Program (PE) was developed to reach a final disposition of each patent within one year of the filing date. Also known as “Track One,” this program’s average pendency is 6.5 months. This program is beneficial to those who file patent applications including claims that accurately define the process or product after a thorough patentability search and analysis by the applicant such that the claims avoid the prior art to the extent possible.
The application process for Track One is relatively simple. An applicant need only file a request, complete a Prioritized Examination Request Form, and pay fees. Fees are significantly reduced for small and micro entities. Track One does not require a pre-examination search, though it is advisable to do so.
Only 12,000 prioritized examination requests are accepted each fiscal year. Track One has been productive. For this reason, the USPTO increased the prioritized examination acceptance rate from 10,000 requests in 2019 to the present 12,000.
In Table 1, the authors share examples of their firm’s experience with expediting examination using Track One at the USPTO. In Application No. 17/308,303, the firm received an allowance in a record time of 9 weeks and 5 days from filing.
Table 1: Examples of expedited patent application cases using Track One
Figure 1 depicts Track One pendency versus that of all USPTO patent applications.
Figure 1: Track One FY13 First Action Pendency Time (in Months) https://www.uspto.gov/sites/default/files/aia_implementation/fast_exam_table20130912v1017.pd
Patents 4 Patients
Patents 4 Patients, also referred to as the Cancer Immunotherapy Pilot Program, is a means for expediting patent applications related to cancer immunotherapy. Under this program, the application will receive an accelerated review with final decisions made in one year or less. Furthermore, the applicant will not be required to pay a petition fee.
To participate in this program, applicants must use the USPTO patent electronic filing system to file a grantable petition. Applications must include one or more claims to a method of treating cancer using immunotherapy. Also, this program is open to applications that have not yet received a first office action, applications where the petition is filed with a request for continued examination, or certain applications where the claimed immunotherapy is subject to an Investigational New Drug Application with the U.S. Food and Drug Administration (FDA). Patents 4 Patients has been in operation for over six years, and the program has been extended until June 30, 2022.
Patent Prosecution Highway
If an applicant has filed a foreign patent or Patent Cooperation Treaty (PCT) application and received a notice of allowance for at least one claim, the Patent Prosecution Highway (PPH) program may be a basis for expedited examination in the United States. The PPH program allows a patent applicant to take advantage of the work that has been done by other patent offices around the world. More specifically, it allows the applicant to request expedited examination after an application in another participating office receives a final ruling that at least one corresponding claim is allowed. The average pendency under the PPH program is 14.2 months. A request for accelerated examination under this program must be filed between the filing of the U.S. patent application and the start of examination. This process has helped millions of people to obtain patent protection more quickly.
Figure 2 compares pendency under PPH with that of all USPTO patent applications.
Figure 2: Patent Prosecution Highway FY13 First Action Pendency (in Months) https://www.uspto.gov/sites/default/files/aia_implementation/fast_exam_table20130912v1017.pd
COVID-19 Prioritized Examination Pilot Program,
The most recent pilot program is the COVID-19 Prioritized Examination Pilot Program, which is intended to promote innovation related to the COVID-19 pandemic. This program accepts 500 patent applications per year without requiring a fee for prioritized examination. However, on September 2, 2021, the USPTO announced that it will continue accepting applications for this pilot through December 31, 2021, even if more than 500 requests have already been approved. Under this pilot, after an application receives prioritization, the goal is to reach a final disposition within one year. This program is open to certain applications containing one or more claims to COVID-19 related products, where the claimed invention is approved by the FDA for COVID-19 use, and the requesting entity benefits from small or micro entity status.
Table 2 compares Track One, Patents for Patients, PPH, and the COVID-19 Prioritized Examination Pilot Program
Table 2: Comparison between expedited examination programs
The USPTO has been modernizing its quality assurance programs and IT infrastructure, including the use of new technologies, and providing detailed information about its progress to the public. These steps have laid the groundwork for the successful use of expedited patent examination programs, including Track One, Patents 4 Patients, PPH, and the COVID-19 Prioritized Examination Pilot Program. The USPTO’s expedited examination programs have boosted the agency’s ongoing efforts to lower the average total patent pendency time.