The United States Patent and Trademark Office (USPTO) published a notice in the Federal Register for First-Time Filer Expedited Examination Pilot Program, 88 FR 14607 on March 9, 2023. This allows an inventor or applicant that is a certified micro-entity that has never filed a non-provisional application or international application to file for expedited examination without extra USPTO fees. The pilot program will currently accept 1000 applications. According to the USPTO, as of April 25, 2023, only 3 applications have been granted special status under this program.
Currently, the “maximum qualifying gross income” to be eligible for the micro entity discount rate is $212,352. However, this amount can change yearly. This is a first certification requirement to determine whether an applicant or inventor qualifies for the new pilot program.
According to the USPTO, the first-time filer expedited examination pilot program is available to “non-continuing original utility nonprovisional applications that do not claim the benefit of the filing date of any prior-filed nonprovisional U.S. applications or international applications designating the United States under 35 U.S.C. 120, 121, 365(c), or 386(c). Note that claiming the benefit under 35 U.S.C. 119(e) of one or more prior provisional applications will not affect eligibility for this pilot program.”
This is a second certification requirement to determine whether an applicant or inventor qualifies for the new pilot program.
In an April 27, 2023 statement of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Kathi Vidal, before Subcommittee of Courts, Intellectual Property, and Internet Committee on the Judiciary, United States of the United States House of Representatives, titled “Oversight of the U.S. Patent and Trademark Office,” (https://www.uspto.gov/about-us/news-updates/statement-under-secretary-commerce-intellectual-property-and-director-united) she stated::
The USPTO has also implemented new programs and initiatives for first-time applicants. First, the USPTO has implemented a new pilot program to provide first-time micro entity filers with expedited examination during the agency’s initial review of a patent application at no additional charge. The pilot program also provides a collection of free training resources for applicants to help ensure their success. Second, the USPTO is developing a pilot pre-prosecution assessment program to support first-time applicants by assessing the strengths and weaknesses of their potential patent applications. (Emphasis added).
The USPTO has different prioritized, accelerated and expedited examination programs. The extra fee for track one prioritized examination under 37 CFR 1.102(e) for a micro-entity under 37 CFR 1.17(c) is currently $1,050, which is in addition to the basic filing fees, search fee and examination fee. The track one program requires additional tasks that must be performed prior to being accepted into the track one program, which can add additional costs.
An example accelerated examination program that is free is for applicants that are 65 years or older or the patent prosecution highway (PPH) program. There have been other expedited examination programs without a fee that are technology based such as for inventions related to the recent COVID-19 pandemic, which is set to expire midnight on May 11, 2023. This COVID-19 pilot program requires that the product or process must be subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use. Another expedited examination pilot program is called the Cancer Moonshot Expedited Examination Pilot Program, the renewal of which was announced by President Biden on February 2, 2022. There may be other expedited examination pilot programs available for other technologies not mentioned here.
According to the USPTO, to file for expedited examination under the first-time filer expedited examination pilot program, the applicant(s) and/or inventor(s) must also certify that:
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. (Emphasis added).
The following free USPTO training resources, under the First Time Filer Expedited Examination Pilot Program, can help inventors build this knowledge:
- The USPTO’s live and interactive Path to Patent Series;
- The USPTO’s self-paced Patent Process Training modules(scroll to the section titled “Patent process training – Tools for Filing an Application”);
- The USPTO Patents Pro Bono Program’s self-paced Basic Patent Training Certification Course; and
- The USPTO’s Nonprovisional Utility Application Filing Guide.
These non-USPTO resources are also available:
- Invent Together’s self-paced Inventor’s Patent Academy; and
- The Michelson Institute for Intellectual Property’s self-paced intellectual property education program.
This is a great opportunity to first time filers that have expedited examination. The USPTO works toward meeting certain timeframes, such as “the 14-4-4-4-36 timeframes” for patent applications. This means there is an expected 14 months’ timeframe to first action. The fours (4) in the list of timeframes relate to various stages of the patent prosecution, including the last timeframe for the issuance of a patent after the applicant pays the issue fees. The 36 in the timeframe list is the expected total number of months from filing a patent application to issuance of a patent application. Not all applications have a first action in 14 months, as some art areas have higher pendency backlog. The expedited examination will generally advance the application toward the top of the ordered examination for expedited examination.
If filing without a registered patent agent/attorney, there is a small price to pay. That price is learning “the basics of the USPTO’s patent application process.” However, going it alone may result in your patent claims not providing you the level of coverage that you should obtain from your patent. Working with a registered patent agent/attorney is highly encouraged. Beusse Sanks has registered patent agents and attorneys ready to assist you.
Lisa Velez is a registered patent agent and former patent examiner with the United States Patent and Trademark Office. Lisa is an electrical engineer with a master’s degree in electrical engineering from George Washington University. Lisa has experience in Patent Portfolio Management and prepares and prosecutes patent applications in software, electrical and mechanical areas.
