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August, 15th, 2022

By Matthew U. Silfin, Jasmine B. Gratton

Intellectual property is one of the most valuable assets a business can have, and those assets need to be protected. For many, quickly gaining intellectual property protection grants them a competitive advantage in the market. Generally, patents take 22-24 months, and trademarks can take 12-18 months to register. Fortunately, the United States Patent and Trademark Office (USPTO) has programs to speed up the patent and trademark registration process, and there are also best practices to use to shorten the prosecution process.

The USPTO has three options to accelerate the patent registration process and two options to expedite a trademark application. To expedite a trademark application, the trademark can be made “special” for unique circumstances through a Request to Make Special or a Petition to Make Special.[1] Similarly, patent applications can be made “special,” resulting in a shortened application and allowance process through prioritized or accelerated examination.[2] The USPTO also participates in the Patent Prosecution Highway (PPH) to provide a fast track for patents filed internationally.[3]

Accelerated Patent Prosecution

Accelerated patent prosecution can vastly shorten the time it takes to gain the benefits of patent registration such as the period of time that the patent can be enforced against potential infringers.

Normally, the USPTO reviews patent applications in the order they are received, but applications that are granted “special” status “will be advanced out of turn for examination” through accelerated examination.[4] A request for prioritized examination can also be made to shorten the examination process. Both the accelerated and prioritized examination processes take about twelve months to complete, but both have their unique uses.

Prioritized examination allows for more claims, up to four independent and thirty total, more flexibility in extensions of time for responses, and fewer required submissions with the application. On the other hand, prioritized examination does cost significantly more than accelerated examination, up to $4,200 for prioritized compared to $140 for accelerated.[5]

Accelerated examination allows fewer claims, up to three independent and twenty total, has additional prefiling requirements compared to prioritized examination such as conducting a pre-examination search, and the applicant must agree to an interview with the examiner. Accelerated examination is much cheaper than prioritized examination, with some types of applications not requiring a petition fee at all, such as patent applications to improve the quality of the environment, conserve energy resources, or for countering terrorism. The special status of accelerated examination applications remains when filing a request for continued examination (RCE) or an appeal, both of which would remove the special status in prioritized examination.

Some types of patent applications are limited to one express prosecution option. For example, plant applications only have prioritized application available while design applications can only utilize accelerated examination. For re-issue, re-examination, and provisional applications, neither of these programs can be used.

International applications have their own expedited prosecution program known as the PPH. Through this program, a patent that has been allowed at another participating patent office can be fast tracked through the USPTO examination process.[6] The PPH can also be used for fast-tracking examination at other participating patent offices for patents already allowed in the US.

Accelerated Trademark Prosecution

Expedited trademark prosecution through USPTO programs is more limited than for patent prosecution, but there are methods of speeding up the trademark registration process. The USPTO’s two options for express trademark examination are by filing a request to make special or a petition to make special.[7]

A request to make special is the most limited avenue available for accelerated prosecution. The request to make special is limited to trademark applications for registrations that were “inadvertently cancelled or expired under 15 U.S.C § 1058, § 1059, or § 1141k.”[8] For a mark to be granted special status through a request to make special, the mark and the goods/services in the application need to be identical or narrower than the cancelled or expired mark.

A petition to make special is a broader option to accelerate trademark registration. The petition must include why the trademark application should be granted special action with supporting evidence. Commonly accepted reasons to make a trademark application special are ongoing litigation, threatened litigation, or the need for registration for government approval of goods or services.[9] If the reason given for expedited examination is one that the USPTO will consider a “situation [that] applies to a substantial number of applicants,”[10] then it will be rejected, and examination will proceed without the application being granted special status.

Even though the options for accelerated trademark prosecution are limited, the registration process can still be sped up through best practices. Some best practices that will shorten the process are performing a thorough trademark search, using the mark in commerce as early as possible, submitting a complete registration application, and responding to Office Actions as quickly as possible. A thorough trademark search will avoid the possibility of applying for registration on a trademark that is duplicative or confusingly similar to an already registered mark. Using the mark in commerce before applying for registration will remove the later step of submitting a statement of use to finalize registration. Having a complete and accurate application will reduce the possibility of a procedural rejection for an unsatisfactory application. The sooner a response is filed to an Office Action issued by the USPTO, the sooner the USPTO will respond and move the application closer to registration.

At any stage of the trademark or patent registration process, complex legal issues might arise. We recommend consulting an experienced and trusted attorney to help in registering intellectual property to ensure the best possible outcome.

 

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

© 2022 Whitmyer IP Group, Stamford, Connecticut.

 

[1] 8 Trademark Manual of Examining Procedure (TMEP) 702.02, 1710 (2021).

[2] 2020 Manual of Patent Examining Procedure (MPEP) 708.02 (2021).

[3] MPEP 708.02(c).

[4] MPEP 708.02.

[5] 37 C.F.R. 1.17(c), (h).

[6] MPEP 708.02(c).

[7] TMEP 702.02, 1710.

[8] Id.

[9] TMEP 1710.01.

[10] Id.

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