By Johny Solomon Raj and Manisha
The USPTO and its Council for Inclusive Innovation launched a Pilot Program in March 2023 providing an expedited First Office Action for First Time Filers in the USA to create a more equitable and diverse innovation ecosystem. This pilot program will open the doors for applicant and inventors who are new in the US patent application process and will provide an easy access to them to US patent system including those historically underserved geographic and economic areas.
As per the current practice of USPTO policy, non-provisional patent applications are examined in the order they were filed. Now, first time patent filers in the USA can participate in this program by filing a petition to make application special using form PTO/SB/464 electronically via Patent Center before a First Office Action is issued, thereby expediting the issuance of a First Office Action.
Program Eligibility Requirements
- Eligibility of Applicant and Inventor
To qualify for this pilot program the applicant and the inventor at the time of filing the petition must meet the following requirements:
- Applicant should certify that the inventor or in case of joint inventors, each inventor are not named as a sole inventor or joint inventors in any of the previously filed US non-provisional applications
- The applicant and inventor and in case of joint inventors, each inventor must satisfy the criteria of Micro Entity status as described by the USPTO. This also must be certified by the applicant.
- The applicant should certify that the inventor or in case of joint inventors, each inventor must be reasonably trained with the US patent application process.
- Non-provisional applications containing abstract, specification, and claim(s) provided in DOCX format and that are filed electronically via Patent Center are eligible for this program.
- Non-provisional applications claiming the benefit of the filing date of one or more provisional applications are eligible for this program.
- Provisional applications, applications claiming priority from a non-provisional US application or international applications designating USA, National phase applications under the Patent Cooperation Treaty, Convention applications under the Paris Convention Route, applications wherein request for making application special has been filed already and granted are not eligible for this program.
The following claim requirement are to be met at the time of filing the petition:
- Number of independent claims should not be more than three.
- Total number of claims should not exceed 20.
- There must be no multiple dependency claim.
An applicant may also file a petition under this program for a previously filed non-provisional US application in which a First Office Action is not issued yet. However, the applicant should file a preliminary amendment in the claims so that the above claim requirements mentioned are met and the petition to make special must be filed before issuance of a First Office Action.
As mentioned above PTO/SB/464 Form is to be filed electronically via Patent Center before issuance of a First Office Action for participating in this program.
The procedure followed by the USPTO after Petition is filed
The USPTO Office of Petitions will review the petition to make special under this program and if the application does not meet all the requirements set forth above, the petition will be dismissed. The petition decision will clearly identity the specific deficiencies on why the petition was dismissed.
If each of the identified deficiency is correctable, the applicant will be granted a single opportunity to correct the deficiency and thereafter, file a new petition to make application special. The time period as provided for filing the petition again electronically via Patent Center by using form PTO/SB/464 is two months which is not extendable.
In case the identified deficiency is not correctable, or the above time period is not met the petition will be dismissed without any further opportunity to the applicant for filing the petition again.
If the petition filed under this program is granted, the application will be allotted a special status and accordingly, placed on an examiner’s special docket until the First Office Action is issued.
This program therefore, will grant opportunity to First Time filers in the US to expedite their examination process and accordingly may get a quicker grant which would be beneficial in a business perspective.