The delay between the filing of a utility patent application to the first office action by the PTO averages three years.  The PTO is considering whether to offer multiple options for patent application review in an effort to reduce the delay.  The proposal would allow the applicant to select fast, medium or slow review.  For the fast option, the patent applicant would pay higher fees in return for expedited review.  The medium option is the current system.  The slow option would allow an applicant to pay a lower fee and postpone examination for up to 30 months, which is equivalent to the current deferred examination.

The PTO also proposes to delay examination of applications claiming foreign priority, which comprise approximately 40% of U.S. patent filings. The PTO would not review the application claiming foreign priority until the first office action by the foreign patent office and the applicant’s response.  This requirement would instantly incorporate deferred examination (at least insofar as foreign inventors are concerned), and off-load at least the initial review to the foreign patent office.  The proposal is not as xenophobic as it first appears – a foreign inventor can avoid the result by filing first with the United States PTO or otherwise eliminating claims of foreign priority. The PTO reports that Japan and the European Patent Office already give priority to local applications.

We believe that more choices available to an applicant are a good thing; however, the proposal may present a significant danger to the fairness of the U.S. patent system.  Depending on its cost, expedited review may create a patent class system and small companies and independent inventors with limited resources may become second class citizens.  The patent applications of those second-class citizens may languish while the PTO expends its resources on expedited reviews for wealthier, more lucrative customers.

The proposal is not final and the PTO is accepting public comment.

— Robert J. Yarbrough, Esq.