First-Time Filer Expedited Examination Pilot Program
April 2023
The United States Patent and Trademark Office (USPTO) announced the First-Time Filer Expedited Examination Pilot Program on 9 Mar 2023. This pilot program is designed to increase accessibility to the patent system for inventors who are new to the patent application process, including those in historically underserved geographic and economic areas. The program expedites the first Office Action for program participants.
Please refer to the official announcement below for details of the First-Time Filer Expedited Examination Pilot Program:
Dates
The USPTO will accept petitions to make special under First-Time Filer Expedited Examination Pilot Program beginning March 9, 2023, until either March 11, 2024, or the date the USPTO grants 1,000 petitions to participate in the program, whichever occurs earlier.
Program Eligibility Requirements
To qualify for this program, the applicant and the inventor must meet the following requirements as of the filing date of the petition to make special:
The applicant must certify that the inventor or, where there are joint inventors, each joint inventor has not been named as the sole inventor or a joint inventor on any other U.S. nonprovisional application.
The applicant must certify that the applicant and the inventor or, where there are joint inventors, the applicant and each joint inventor qualify for micro entity status under the gross income basis requirement. The applicant must separately and properly establish micro entity status by filing USPTO Form SB/15A (Certification of Micro Entity Status—Gross Income Basis) no later than the date that the petition to participate in this pilot is filed. For more information regarding micro entity status requirements, see the USPTO Micro Entity Status web page (https://www.uspto.gov/PatentMicroentity).
The applicant must 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. For applicants who are unsure whether they meet this requirement, exemplary patent application training resources that could be used to meet this requirement are available at the pilot program web page (https://www.uspto.gov/FirstTimePatentFiler).
Other Requirements for Filing
To participate in this program, an applicant must file a petition to make special using form PTO/SB/464, titled “Certification and Petition for the First-Time Filer Expedited Examination Pilot Program”. This form must be filed electronically via Patent Center.
The aforesaid PTO/SB/464 form must be filed before a first Office Action (including an action containing only a restriction requirement) is issued in the application.
In addition, the application must meet the following claim requirements for a petition to make special under this program to be granted, and for the remainder of prosecution:
There are no more than three independent claims
There are no more than 20 claims total, and
There are no multiple dependent claims.
Claiming Priority
Applications claiming the benefit of the filing date of one or more provisional applications under 35 U.S.C. 119(e) are eligible for this program. However, please note that this program is not open to applications that claim the benefit of the filing date of any prior-filed nonprovisional US applications or international applications. As such, the following applications are not eligible for this program:
Continuation, continuation-in-part, divisional, and bypass applications
Applications claiming a right of foreign priority under 35 U.S.C. 119(a)-(d) or (f) to one or more foreign applications
Applications entering the national stage under the Patent Cooperation Treaty (PCT) as set forth in 35 U.S.C. 371.
If you would like to have more information on this matter or would like to have our advice, please feel free to contact us at eip@eipgroup.asia.
This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.