Expedited Examination Programs of IP Offices
Patent offices around the globe recognize the importance of timely delivery of their decisions. Irrespective of its underlying causes, prolonged pendency can have significant consequences.[1] It can lead to delays in the commercialization of technologies and hinder the objectives of the patent system as a whole. Delays can be particularly problematic in fast-paced industries where innovation cycles are short. Thus, timeliness in the evaluation of patent applications is recognized as one of the important elements contributing to the quality of the patent granting process. This means that not only the quality of examination reports but also the speed at which they are delivered are vital to the quality of patents.
To address the issue of patent pendency and serve the needs of innovators/applicants efficiently, many Intellectual Property Offices (IPOs) have implemented expedited patent examination programs. These programs are designed to accelerate the processing and examination of patent applications, allowing the applicants to obtain decisions on their patent applications in a more expeditious fashion compared to applications processed according to the conventional examination timeline. In essence, eligible applications are examined as a matter of priority and, consequently, the time needed to obtain a patent could be significantly reduced.
The types of expedited examination programs offered by the IPOs differ one from another. While it is difficult to summarize all available expedited examination programs, the following general observation can be made.
In many IPOs, expedited examination programs may be requested on one or more grounds. In some countries, the program is available to any applicant and applies to applications in any field of technology. In other countries, the program is available to eligible applications/applicants under the applicable law, and the possibility to accelerate examination procedures may depend on various qualifications, the most popular being:
- the status of the applicant (such as a small or medium-sized enterprise or startup business, an elderly applicant or an applicant who is seriously ill, or a public entity);
- whether the application relates to a certain area of technology (such as green technology, health-related technology or artificial intelligence);
- whether the expedited examination is justified based on public interest (such as national emergency, defence purposes or disaster prevention);
- business circumstances of the applicant (such as an applicant requesting a public fund, anticipating infringement proceedings, or intending to commercialize the invention); and
- conditions on the filing route (e.g., the application was first filed in the national IPO, or it has been or will be filed in at least one other foreign IPO).
In addition, some other types of expedited examination are introduced in some countries. They include patent applications that have been subject to unreasonably long pendency and applications directly related to promotion of export or R&D in certain technical fields stipulated in the applicable national law. In a number of IPOs, the expedited examination programs are available with respect to patent applications which concern COVID-19 specifically. Such programs aim to facilitate fast entry into the marketplace of critical technologies to address the global crisis for the benefit of the public.
Depending on the types of expedited examination programs offered by the IPOs, the rationale behind expedited examination practices may be different and can be attributed to several compelling reasons, including:
- Facilitating Commercialization: Expedited examination practices facilitate the commercialization of patented products and foster business partnerships. Businesses can more readily license or enforce their IP rights when they are granted quickly.
- Responding to Emerging Technologies: In rapidly evolving technological fields, timely protection of intellectual property is critical. Expedited examination practices allow applicants in these cutting-edge industries to secure their rights swiftly, enabling them to capitalize on their innovations before they become obsolete.
- Supporting Small Businesses and Startups: Small businesses and startups often have limited resources and need to commercialize their intellectual property quickly to compete in the market. Expedited examination practices level the playing field by giving these entities a faster route to protection, enabling them to compete effectively with larger companies.
- Addressing global challenges: Technology plays a pivotal role in addressing and resolving some of humanity's most pressing challenges, such as global climate change, the COVID-19 pandemic, or unforeseen global crises that may emerge. The public greatly benefits from the timely delivery of solutions to pressing global issues and swift deployment of these technologies.
- Public interest or humanitarian consideration: Exceptional circumstances such as national emergency (e.g., natural disaster), or humanitarian reasons (e.g., the age/health conditions of applicants) may justify expeditious processing of patent applications based on public interest or humanitarian consideration.
In addition to the above, it was suggested that, on a larger scale, delay in granting patent rights can affect the flow of foreign investment, with subsequent repercussions on domestic innovation reliant on this important venture capital for research and development.
In summary, with respect to rationale of such programs, by prioritizing certain applications, IPOs can create a dynamic and responsive intellectual property ecosystem that benefits both applicants and society as a whole. These practices play a vital role in shaping the innovation landscape and driving economic growth in today’s fast-paced world.
In most offices, procedures and conditions for requesting accelerated examination are subject to an express request by the applicant within a certain time limit, but this differs from one office to another. For example, a request may be made at the time of filing a patent application, after the filing, any time after the application entered the substantive examination process or before the first office action. In general, applicants are required to provide justification and supporting documents to qualify for a specific program.
In several offices, to qualify for the acceleration program, a patent application and/or a request for participation in such a program must be filed electronically via the office’s electronic filing system.
As the number of requests for participation in the fast-track examination programs can be high in some technological fields, in some offices, accelerated prosecution of the application is provided only where it is practically feasible, i.e., the acceptance of such requests is subject to the workload of search and examining divisions.
Specific conditions to be met to qualify for accelerated examination are different from one office to another and between various types of programs in the same office. For example, in some offices, the number of claims in the application must be limited to a certain number, and the application must be complete to be considered for expedited examination. Another difference among the offices is the availability of accelerated examination for international applications under the PCT that entered the national phase.
With respect to prioritized examination of COVID-19-related applications, some other conditions may need to be fulfilled. For example, in one office, to be granted a prioritized examination status, a request must include a certification that the applicant qualifies for small or micro entity status and a certification asserting the relevance of claim(s) to an applicable regulatory approval for COVID-19 use.
Under some circumstances, offices can remove an application from the accelerated examination program, resulting in the application being examined according to a standard examination procedure. For example, such circumstances in some offices include: (i) the request for accelerated examination or application has been withdrawn; (ii) the applicant has requested an extension of time limits; (iii) the application has been found to be irregular; and (iv) the application has been amended.
The majority of the offices which provided information on their accelerated examination programs do not require payment of fees for requesting participation in such programs. In some offices, a fee may be required for some grounds for acceleration but not all. In at least one office, the fees for expedited procedure increases by 100 per cent as compared to the fee established for the standard examination procedure. Among offices which offer accelerated examination procedure with respect to COVID-19-related applications specifically, only few offices require fees.
The average pendency period of applications under regular patent examination varies from one office to another, and so is the average pendency period of applications under accelerated examination, since there are many factors that affect the period. In most of the offices that provided information on pendency, it takes on average more than a year or two to receive a final decision of the office on applications processed according to a regular procedure. Pendency for applications which were examined under accelerated procedure has been reduced by half of that time in some offices, whereas in other offices, to several months. Several offices reported that the average pendency of application processed under the accelerated programs is around 12 months. In two offices, examination pendency for expedited applications is around 20 or 24 months from the filing date or the time of filing a request for such an examination.
- Summary table
Australia
Brazil
Bulgaria
Canada
China
Czech Republic
Finland
France
Israel
Japan
Morocco
Norway
Republic of Korea
Republic of Moldova
Russian Federation
Singapore
Slovakia
Spain
Thailand
United States of America
European Patent Office
The Patent Prosecution Highway (PPH) is an examination cooperation program between two IP Offices, typically managed by a number of bilateral PPH agreements between cooperating Offices. Under the agreements, if the claims of an application are found patentable by the first office (OEE: Office of Earlier Examination), an applicant may request accelerated examination of corresponding claims in a corresponding application at the second office (OLE: Office of Later Examination). The accelerated examination procedures allow applicants to obtain a final examination decision at the OLE more quickly. The OLE can utilize the positive search and examination result of the OEE, while considering the compliance with the patentability requirements under the national law of the OLE. Applying the same PPH principle, some patent offices have concluded agreements which integrate bilateral schemes to a plurilateral scheme. A multi-party PPH allows applicants to request an accelerated examination of a corresponding application at any of the participating office, if the claims of the application are found allowable by any other participating office.
Certain IPOs provide other types of collaborative initiatives, either bilateral or plurilateral, that aim to expedite patent examination procedures and reduce pendency.
Patent Prosecution Highway
Other Bilateral and Multilateral Initiatives