The United States Patent and Trademark Office (USPTO) recently launched an online platform First Desktop Action Estimator, which provides an estimate of when a patent application will receive first action from the Office. Having an idea of when a patent application will first be submitted for examination can help applicants make various strategic decisions to manage costs and/or proceed to grant more quickly. This article explores these decisions.
The First Office Action Estimator provides applicants with a quick and easy method of finding out when a First Office Action can be mailed by entering an application number into the form. The USPTO offers two other options for receiving an estimate, but they both require a login. Private PAIR provides a “First Action Prediction” tab for patent applications awaiting first action from the Office. Patent Center displays a shaded “estimated time to first action” notice at the top of the screen when relevant to a patent application. the USPTO States this “[a] The First Office Action estimate will not be available for an application if a First Office Action has already been issued for the application, or if the application has not yet been filed.
Being able to check online when a patent application is expected to receive first action from the USPTO Office can help an applicant know when costs are likely to be incurred to respond to the action of the USPTO. Office. Regularly checking the USPTO’s estimated time is easy and free and can yield positive results for cost management.
Process allocation faster
Receiving a First Office Action Estimate can help an applicant decide when or if to take certain beneficial steps that can only be taken before a First Office Action is sent. . These actions include:
Patent Lawsuit Highway
the Patent Lawsuit Highway (PPH) is a program that the USPTO provides in cooperation with various foreign patent offices. A candidate is eligible to file a free application for acceptance into the PPH program only before a first Office action is mailed. A US patent application is eligible for the program only if a participating foreign patent office has indicated that at least one claim in a corresponding patent application is eligible. The USPTO’s first Office Action Estimate can help an applicant properly time the PPH filing and receive Office action sooner than expected, as the application will be moved up the queue. awaiting examination upon acceptance into the PPH program.
Collaborative Research Pilot Program
the Collaborative Research Pilot Program (CSP) expedites the prosecution of related applications at the USPTO and the Japan Patent Office (JPO) or the Korean Intellectual Property Office (KIPO) by enabling offices to perform and share searches on the state of the art before issuing a first action. Since the CSP is only available before a first Office action is sent, the USPTO Action Estimator can help ensure that the free request for acceptance in the CSP is submitted before an application becomes ineligible. The CSP is set to expire on October 31, 2022. Further details on the CSP can be found in Mintz’s previous CSP article.
Petition to make special
Special status moves a patent application to the top of the examination queue, so that a first action from the Office is sent more quickly. 37 CFR 1.102(c) explains: “A petition to make a special request may be filed free of charge if the basis of the petition is: (1) The age or health condition of the petitioner; or (2) That the invention will materially: (i) improve the quality of the environment; (ii) Contribute to the development or conservation of energy resources; or (iii) Contribute to the fight against terrorism.
A preliminary amendment can only be filed before a first Office action is sent and allows the amendment of pending claims, the cancellation of pending claims and the addition of new claims. Knowing the estimated timing of a first Office action can help ensure that the most desirable claims are on file for initial examination without the applicant having to incur the expense and delays of filing a continuation request. Claim amendments can be made through a Preliminary Amendment that would otherwise not be entered after a first Office Action is mailed, i.e. due to election on original presentation.
The USPTO warns that “[t]Estimates provided by the First Office Action Estimator are not guaranteed by the USPTO. In other words, the estimate is just a best estimate. The estimate should not be taken as an absolute. A number of factors can change when the USPTO sends a First Office Action, such as a patent application being reassigned to a different Examiner or an Examiner using discretion to remove a patent application from its usual place in the queue. waiting for exam. However, the Office’s first estimate of action can still usefully expedite the assessment of the status of a patent application and how best to handle litigation to secure the desired claims.
©1994-2022 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC All rights reserved.National Law Review, Volume XII, Number 40