In 2006, the USPTO introduced the accelerated examination process. If an application conducted a pre-filing search and submitted an examination support document, examination would be accelerated. This procedure carries not only hefty additional legal costs for applicants; it may also result in estoppels and file history-related or file wrapper-related risks. Put another way, you may be forced to take a legal position that you later regret has unintended consequences.
The new fast track procedure does not require the applicant to undertake the pre-filing search and extra document preparation, nor does it expose the applicant to file wrapper risks. Applicants simply pay the fee and can move the patent application through the USPTO at 3-4 times the normal speed.
Is it worth the cost?
Determining the cost-efficiency of the fast track option is a business decision and requires careful consideration. In addition to the added filing fees, the fast track will compact prosecution into 12 months – including all of its legal costs. An applicant must have the time and money resources for the speedy prosecution process.
Situations where fast track should be considered:
- An immediate need to recover Return on Investment (ROI) on the technology (licensing opportunities or sales are better on issued patents than on pending applications);
- Additional capital that is needed must be raised through investors (investors perceive less risk on patented technology);
- The patent is directed to key product or technical features;
- The time to market is critical; or
- Competitors will quickly enter the marketplace.
In short, applicants seeking a speedy way to process a patent application should seriously consider the fast track option, but need also consider the financial and time burden associated with this option.