Opportunity for reform of the US patent examination system: Should “examination upon request” be introduced?

After the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA) came into effect in 2013, the U.S. patent law has become partially consistent with the patent laws of most other countries that are parties to the Patent Cooperation Treaty (PCT). However, there are still significant differences in patent examination fees and procedures between the United States and other PCT countries. This difference provides an entry point for identifying the uniqueness and potential optimization points of the U.S. patent system.

When the U.S. First-Inventor-to-File (FITF) provision came into effect in 2013 under the America Invents Act (AIA), U.S. patent law was only partially harmonized with that of most other Patent Cooperation Treaty (PCT) countries. The most important difference between the U.S. and many other PCT countries is that patent examination fees in the U.S. are paid at the time of application and do not proceed until a withdrawal, request for deferred examination, or abandonment of the application has been filed. In contrast, foreign patent applications in most other PCT countries are examined only when the applicant explicitly requests examination, and examination fees are paid when an examination request is filed. For example, European patent applicants can defer examination fee payment until 31 months after the earliest priority application date. This difference results in most U.S. non-provisional patent applicants typically obtaining at least one substantive action from a patent examiner at the U.S. Patent and Trademark Office (USPTO) after paying the examination fee.

If the USPTO adopts a request for examination system, it may bring benefits to applicants. For example, a request for substantive examination can be filed and fees paid after the USPTO search results are available. This request for examination system will allow applicants to consider whether to proceed with their applications in light of prior art discovered in the search and/or other technological advances that may reduce the value of their U.S. patent applications. The request for examination system will also give U.S. applicants additional time to determine whether their technology meets commercial benchmarks and to raise the funds needed for commercial development. Under an ideal request for examination system, applicants seeking immediate examination can request examination immediately or file a TrackOne expedited examination request, while applicants who wish to postpone examination and the corresponding fees can postpone until a reasonable request for examination deadline.

For the USPTO, adopting the examination request system may also bring benefits and reduce the number of patent applications that are substantively examined. Before the AIA came into effect, approximately 14% of patent applications were abandoned after the first official response. According to statistics, the voluntary withdrawal rate is higher in technical fields such as insurance, finance, and molecular biology. The USPTO's first examination opinion actually consumes a lot of USPTO patent examiners' efforts in analyzing search results and determining the patentability, innovation, non-obviousness, feasibility and written description of the patent. If the substantive examination fee is not paid, some applications may be abandoned before the substantive response, and the applicant may have more time to evaluate the value of the application.

By adopting the examination request system, the USPTO may be able to better adapt to the trend of global patent examination, which can not only save costs for applicants, but also improve examination efficiency. This change may have a more far-reaching impact. If you want to get more information about patent process and technological innovation management, please continue to pay attention to Yezhima. We are committed to providing you with a full range of intellectual property support and services.