Introduction

As Chinese companies accelerate their “go-global” strategies, the intellectual property (IP) challenges they face in international markets are increasing. Intellectual property not only relates to a company's core competitiveness but is also crucial for its sustainable development. In the context of globalization, the demand for IP protection in overseas markets is becoming more urgent for Chinese companies. To effectively protect their technological innovations and brand value, Chinese companies are paying more attention to filing and arranging overseas patents.

To promptly protect their intellectual property and gain a competitive edge in rapidly evolving markets, applicants sometimes expect to shorten the patent grant cycle as much as possible.

As one of the largest economies in the world, the United States has a strict intellectual property protection system and is also a key country for Chinese companies seeking to expand their IP portfolio abroad. This article briefly outlines several pathways for accelerating patent examination in the United States, offering practical advice for Chinese applicants seeking patent protection there.

I. Patent Prosecution Highway (PPH)

The PPH allows applicants to use favorable examination results from other countries’ patent offices to accelerate the examination process in the United States. For instance, if an applicant receives favorable examination results in China or Europe, they can use the PPH to submit these results to the United States Patent and Trademark Office (USPTO) and speed up the U.S. patent examination.

1.1 Types of PPH

The PPH includes the regular PPH and PCT-PPH. Regular PPH further divides into non-MOTTAINAI and MOTTAINAI types.

Specifically, regular PPH refers to an applicant using the domestic examination results from the first office to request PPH at the subsequent office.

PCT-PPH refers to applicants utilizing the results from the PCT international phase to request PPH at relevant patent offices.

PPH-MOTTAINAI expands the conditions of regular PPH by including cases where the initial application originates from another office, or where the subsequent office is the first to issue examination results. Table 1 compares the document basis for the three types of PPH.

1.2 Eligibility Requirements

1.2.1 Regular PPH Requirements:

The U.S. application has the same priority date as the corresponding application at the first examination office.

The first examination office's results must indicate at least one claim in the corresponding application that is patentable.

The scope of claims in the U.S. application must be equal to or narrower than the corresponding claims in the initial application.

The U.S. application has not yet undergone substantive examination.

1.2.2 PCT-PPH Requirements:

• The PCT application has entered the U.S. national phase.

• The international search report shows at least one patentable claim (novelty, inventiveness, and industrial applicability).

• The claims of the U.S. application must be equal to or narrower than the claims recognized in the international phase.

• The U.S. application has not yet undergone substantive examination.

It is worth noting that PPH requests in the U.S. should be submitted before substantive examination begins, with two opportunities available. The results may include authorization and payment notifications, non-final rejections, and final rejections. There is no official fee for submitting a PPH request in the U.S.

1.3 Acceleration Speed

According to data from the USPTO, once a PPH request is approved, the applicant typically receives the first examination notice within 4.8 months, with an authorization rate of over 80%.

II. Prioritized Examination (PE)

Prioritized Examination (Track One) is a service introduced by the USPTO that allows applicants to pay an additional fee to obtain prioritized examination. This accelerated process enables examination to be completed within one year of submission, significantly reducing the waiting time in the traditional examination process.

2.1 Eligibility Requirements

Track One is applicable to non-PCT U.S. applications that are not provisional. Eligible applications include continuation applications (CA), continuation-in-part applications (CIP), divisional applications (DA), and bypass applications.

The request must be filed when the independent claims do not exceed 4, the total claims do not exceed 30, and there are no multiple dependent claims.

It is important to note that the prioritized examination request must be submitted with the new application, submitted online (EFS-Web), and the prioritized examination fee must be paid (large entity: $4800, small entity: $2400, micro entity: $1200), along with the publication fee for the patent application.

2.2 Acceleration Speed

According to data from the USPTO, applications with Track One requests typically receive the first examination notice in an average of 2.6 months (compared to 14 months for regular applications). Since September 24, 2021, the USPTO can handle up to 15,000 prioritized examination requests per fiscal year.

III. Accelerated Examination (AE)

The Accelerated Examination (AE) is a regular process for fast-tracking patent examination in the U.S. All standard invention patent applications, including continuation (CA), continuation-in-part (CIP), divisional (DA), and bypass applications, can be submitted under the AE process. Compared to the Track One process, AE has more requirements and stricter conditions that need to be carefully prepared, otherwise, it is more likely to be rejected.

3.1 Eligibility Requirements

• Independent claims do not exceed 3, total claims do not exceed 20, and no multiple dependent claims. The application must meet the unity of invention requirement.

• The applicant must provide search results, including relevant search results and arguments showing that the claims of the application are substantially different from the prior art.

• The accelerated request must be filed simultaneously with the patent application and the corresponding fees must be paid (large entity: $140, small entity: $70, micro entity: $35). However, applications aimed at protecting the environment, energy efficiency, or combating terrorism can be exempted from this fee.

  
  

Acceleration Speed:

Once AE is approved, the first examination opinion is typically issued in 3.9 months, with a final decision expected within 12 months from the filing date.

It is important to note that if the examiner finds that the submitted documents do not meet the requirements, the request for accelerated examination may be rejected.

IV. Other Accelerated Mechanisms

In addition to the three primary acceleration pathways, the USPTO offers several special acceleration programs. These include the Climate Change Mitigation Pilot Program, age/health-based special examination, and programs for applications related to environmental improvement, energy development, or counterterrorism. These programs are less commonly used by Chinese applicants.

In summary, PPH, PE, and AE are the most common methods for accelerating patent examination in the U.S.

• PPH has the lowest cost since it does not require official fees, but its acceleration effect is not as fast as PE and AE, and it requires clearer prospects for patentability.

• PE offers fast acceleration and a convenient process but is not applicable to PCT-entered applications and involves high fees.

• AE has fewer document restrictions but requires a high level of preparation for the request documents. Applicants can choose the most suitable acceleration method based on their needs to expedite patent granting.