The US Patent and Trademark Office (USPTO) introduced the Accelerated Examination program in 2006 to help applicants receive expedited examination of important patent applications. The USPTO is ending the Accelerated Examination program on July 10, 2025, for utility patent applications, as we noted in a prior alert. This article provides patent applicants with some strategic options for faster initial examination of a utility patent application that can be used instead of the Accelerated Examination program. Each of these options is valuable to consider before a first action on the merits is issued for a US patent application.
Patent Prosecution Highway (PPH) Program
Overview: The PPH program allows an applicant to file a petition for fast track examination when one or more corresponding claims of a patent application filed outside the US are indicated as being allowable. The non-US application must be in a jurisdiction that participates in the PPH program and must have the same priority date (i.e., earliest filing date) as the US application.
Pros: There is no USPTO fee for a PPH petition, so it is a low-cost option. Many jurisdictions around the world participate in the PPH program, as identified in the PPH program link above, including popular jurisdictions like Europe, Japan, China, Canada, and Australia. Additionally, a PPH petition is typically granted or declined by the USPTO in an average of 29 days. Even if a USPTO examiner does not find all claims allowable, an application with granted PPH status has still jumped ahead in the patent examination queue and received faster first action than it most likely would have received otherwise.
Cons: Eligibility for the PPH program requires knowledge of the status of multiple patent applications (the US application and at least one application filed outside the US), which may be difficult when different local counsel handle the prosecution of the US and non-US patent applications. Claims are evaluated for patentability according to local jurisdiction laws, so not all claims found allowable outside the US may be found allowable in the US. Additionally, all pending US claims must correspond sufficiently to the allowable non-US claims in order for the PPH petition to be granted. Thus, some US claim coverage for seemingly allowable subject matter may need to be postponed and then filed as continuation applications. For example, US method claims could not be pursued under the PPH program if only apparatus claims are found allowable in the non-US jurisdiction.
Prioritized Patent Examination Program (Track One)
Overview: The Prioritized Examination Program, commonly referred to as Track One, grants an application special status if a fee is paid at application filing and all other requirements are met (see Manual of Patent Examining Procedure (MPEP) § 708.02(b)). Special status moves an application up in a USPTO examiner’s queue of applications awaiting examination.
Pros: Requests are typically granted or denied by the USPTO in an average of 51 days. Following a granted request, USPTO examiners usually act quickly on Track One applications. Per USPTO statistics, Track One applications can currently expect a first action in an average of 1.3 months and final disposition in an average of 4.5 months.
Cons: A Track One request is expensive, currently costing $4,515 per request for large entities, $1,806 for small entities, and $903 for micro entities. The Track One fee and all other required fees must be paid on the filing date. Special status under Track One is temporary and lapses automatically if any one of a number of events occur: a final office action is mailed; an extension of time is filed for any applicant reply; the claims are amended to contain more than four independent claims, thirty claims total, or a multiple dependent claim (a claim that depends on two or more claims in the alternative); a Request for Continued Examination (RCE) is filed; a notice of appeal is filed; a request for suspension of action is filed; the application is allowed; or the application is abandoned. Additionally, acceptance into Track One is capped at 15,000 applications per fiscal year, so the program may become unavailable toward the end of a fiscal year. The USPTO provides up-to-date Track One filing statistics.
Petition To Make Special
Overview: A granted Petition To Make Special gives an application special status if all requirements are met (see MPEP § 708.02). Like the PPH program, special status moves an application up in a USPTO examiner’s queue of applications awaiting examination.
Pros: Petitions To Make Special incur no USPTO fee and can be granted instantly upon filing. There is no restriction on the number or type of claims in an application eligible for a Petition To Make Special.
Cons: Petitions To Make Special do not have significant cons, but they are available only under limited circumstances: an inventor is age 65 or older, an inventor’s health means the inventor might be unavailable to assist in prosecution if prosecution were to run its normal course, the invention will materially enhance environmental quality, the invention will materially contribute to the development or conservation of energy resources, or the invention will materially counter terrorism.
Meeting National Stage Entry Requirements
Overview: A US patent application filed as a national stage application under 37 CFR 371 will not secure a position in an examiner’s queue for examination until all national stage entry requirements are met (see MPEP § 1893.03(b)).
Pros: Meeting all national stage entry requirements on the date of US application filing will ensure no delay in an application being queued for examination.
Cons: Few to none. Note, however, that a US national stage application may be filed to secure an earlier priority date without all national stage entry requirements being met on the day of filing, with some requirements taking considerable time to be satisfied later. For example, an oath or declaration of one or more inventors satisfying 35 U.S.C. § 115 may not be signed and filed until sometime after the US application is filed. For another example, an English-language translation of a non-English priority application may not be available for filing until sometime after the US application is filed.
This article should not be viewed as legal advice but merely as background information on different options for patent examination that could be available for qualified patent applications. To learn more about which option might be right or available for you, please contact the author or any other member of McCarter & English’s patent prosecution group.