More on Fast-Track Examination

A survey is being conducted over on the Patently-O blog on the prospective popularity of the USPTO's proposed "fast-track" examination process. We look forward to the results with some interest, particularly with regard to the likely utilisation of such a system by domestic (ie US-based) applicants.  Patentology has already considered the possible issues for foreign applicants in this earlier article.

The Patently-O survey asks, among other things, about the price-point, in terms of official fees, at which fast-track examination might be an attractive option.  The subtext appears to be that if the fee were set too low, a large proportion of applicants might request prioritised examination, such that the priority queue would become, in effect, the same thing as the current standard examination queue, such that little improvement in examination time could be achieved.

Patentology is not convinced, however, that the setting of the fee is a major issue.  As we have previously noted, many jurisdictions already provide applicants with substantial control over the pace of examination.  Just north of the US border in Canada, for example, applicants can delay requesting commencement of examination until up to five years from the original filing date.  In Australia, a similar five-year deadline also applies, with the difference that the Commissioner of Patents can issue an Official Direction at an earlier date, requiring the applicant to request examination within six months.  Examination Directions are presently issuing no earlier than around three to four years after the priority date, with the delay being longer in around half of all cases.

There is no additional cost to file an earlier request for examination.  Furthermore, in Australia a request may be made for accelerated examination, with no associated official fee.  In our experience, however, applicants rarely request exam prior to the issue of a Direction, and requests for expedited exam are even more unusual.  Those applicants that do accelerate the process tend to do so for sound commercial reasons, which would probably justify the payment of any official fee.

The particular circumstances of the applicant, rather than up-front cost, therefore appears to be the major driver for requesting accelerated examination.  Early examination and grant might appear, in the abstract, to be beneficial.  However in practice most applicants elect to delay the associated costs, presumably because a granted patent would provide no immediate business advantage.

However, we acknowledge that the Australian experience might not provide a meaningful comparison by which to predict the utilisation of fast-track examination in the US.  As we have previously noted, one possible reason for delaying examination in smaller markets, such as Australia, is to gain the benefit of search and examination in the world's major patent offices, such as the USPTO.

We have therefore tracked down statistics for the utilisation of the European Patent Office's "PACE" programme for acceleration of applications.  The programme attracts no additional official fees, and allows applicants to accelerate the initial European search, the subsequent examination, or both.

The following table summarises the utilisation of the PACE programme between 2004 and 2009, drawn from the EPO's annual reports for these years:

Year	Accelerated Search (%)	Accelerated Exam (%)
2004	4.5	5.8
2005	4.8	6.5
2006	5.3	6.7
2007	4.0	5.6
2008	4.8	5.8
2009	5.6	6.8

It is apparent that there has been no significant variation in utilisation of the PACE programme over recent years.  Requests for accelerated search hover around 5% of all cases, while requests for accelerated examination are slightly higher at around 6% of all cases (presumably some of these are prompted by favorable search reports).  The slightly higher proportion of accelerated examination requests in 2009 seems a little incongruous, in view of the economic circumstances following the GFC, however this must be seen the context of a 6% decrease in the overall number of requests for examination last year.

We therefore wonder whether the likely rate of requests for prioritised examination at the USPTO might be around 5%, even if the associated fee were to be nominal, or nonexistent?

It will be interesting to see whether the results of the Patently-O survey suggest otherwise.

Experiences and thoughts from practitioners in other jurisdictions would be most welcome.

Tags: Accelerated examination, Australia, Europe, US