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Examination of Patent Applications at the United States Patent and Trademark Office (USPTO or PTO) takes too long.  That’s the message from the USPTO’s own Performance and Accountability Report for Fiscal Year 2013.

For the year ending September 30, 2103, the average pendency from the filing date to the first office action was 18 months.  The average pendency from the filing date to the granting of a patent is 29 months.  The 18 month delay is of no help if you want some indication of patentability before incurring expenses of foreign filing (or investing money as a potential manufacturer or licensee) since the deadline for filing a corresponding foreign application is 12 months from your U.S. filing date.  The 29 month delay is of little help since a competitor can start copying and damage your market, and then stop shipments if you receive a patent.

But even those statistics don’t tell the entire story.  The USPTO categorizes inventions by technology into eight broad areas such as biotech, computers, communications, networking, etc.  In five of those eight broad areas — more than half — you will wait longer than the “average” time for either a first action or a final decision.

For years, the USPTO permitted inventors to have their applications processed more quickly for a variety of reasons, such as the inventor’s age, the inventor’s deteriorating health, or where the invention was directed to countering terrorism, developing or conserving energy resources, or enhancing the quality of the environment.  But those situations don’t help most inventors.

There are two additional options available, accelerated examination and prioritized examination.  Accelerated examination has been available since about 2006.  Prioritized examination has only been available since September 26, 2011, as part of the 2011 America Invents Act.

To help you understand the differences between the two types of faster track examinations, we have created a chart that explains them.


Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.