How To Get Prioritized Examination of an International Application Entering the US National Stage

Posted Monday, August 31, 2015.

For a few years now, the USPTO has been accepting requests for prioritized examination of patent applications under its Track One program. The Track One program is described more fully here, and enables an applicant to possibly receive a patent within a year of filing, instead of in the normal timeline.

As of July 2015, the “normal timeline” means that a patent will issue or go abandoned on average in 26.6 months. However, the USPTO’s stated goal of the Track One program is for the patent to issue or go abandoned inside 12 months, and I have personally obtained patents for clients in as little as five months with Track One. I am a big fan of prioritized examination via the Track One program.

However, Track One is not available for applications which begin as international applications and then enter the U.S. National Stage. Applicants with foreign filings could file a Track One application concurrent with the international (PCT) application, but this can be kind of costly since PCT applications themselves have expensive filing fees. Some applicants prefer to go the PCT route I wrote about here, and not seek the patent in the US until later. That approach spreads the costs out.

Let’s say you file a PCT application, then wait the 30 months until the deadline for filing a national stage application in the U.S. And at the time of the U.S. national stage entry, you would like prioritized examination. How can you do that? The USPTO won’t accept a Track One application for a national stage application, unless it’s an RCE (usually filed after a Final Office Action – read more here).

The answer is: file the national stage application at the USPTO, and then file a U.S. continuation application which claims priority to the national stage application (read more about continuing patent applications here). You can then request prioritized examination of the continuation application, pay the Track One surcharge, and get faster US examination of your application even though it began as a PCT application.

At that point you have two applications pending. You could even change the claims in one application or the other and have claims to two different inventions examined via this process. You will likely receive an answer first on the application you filed second, but my experience is that once the Track One application is examined, if the same examiner is assigned to both you usually get the initial application examined very quickly afterwards (possibly sooner than you would otherwise).

I have used this strategy successfully to accelerate examination of inventions disclosed in national stage applications, even though the USPTO states they won’t accept a Track One request for such an application.

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