First-Time Patent Filer? The USPTO Wants to Make You SpecialApril 19, 2023

As part of ongoing efforts to create a more equitable and diverse patent system, last month the USPTO and its Council for Inclusive Innovation (CI²) announced the First-Time Filer Expedited Examination Pilot Program. The goal of the program is to increase accessibility to the patent system for inventors who are new to the patent process. Under the program, the USPTO will accept petitions to make special for first-time filers who meet certain criteria. If accepted, the patent application will be examined out-of-turn, expediting the first Office Action. The USPTO believes that this will reduce time-based barriers for inventors who may otherwise be unable to participate in the patent system.

To participate in the program, applicants and inventors must meet three requirements:

1. The applicant must certify that the inventor, or each joint inventor, has not been previously named as an inventor on any other U.S. nonprovisional patent application.
2. The applicant must certify that the applicant and inventor, or each joint inventor, qualify for micro entity status under the gross income basis requirement. Micro entity status must be separately established no later than the date that the petition to participate in the pilot program is filed. The current maximum qualifying gross income for micro entity status is $212,352.
3. The applicant must certify that the inventor, or each joint inventor, is “reasonably trained on the basics of the USPTO’s patent application process”. The USPTO has numerous training resources available online that can be used to meet this requirement. Although the USPTO wants participating inventors to take a “hands-on” approach, applicants are still able, and encouraged, to retain patent counsel to guide them through the patent process.

The program is only available for noncontinuing, nonprovisional utility applications. Applications claiming priority benefit to a provisional application are eligible; however, applications claiming a right of foreign priority or entering national stage under the Patent Cooperation Treaty are not eligible.

In addition, there are various other technical requirements for the application itself. The application must be filed in DOCX format and must be completed on the date the petition is filed. Claims are limited to 20 total, with no more than three independent claims and no multiple dependent claims. Applications filed with non-conforming claims can be amended via preliminary amendment to conform to program requirements prior to the petition being filed. Finally, in order to be considered for participation, applicants must electronically file a specific PTO form requesting participation. Petitions must be filed before issuance of the first Office Action (including restriction requirements). No petition fee is required.

The USPTO will accept petitions to participate in the program until March 11, 2024, or until 1,000 patent applications have been granted special status, whichever occurs earlier. As of April 18, 2023 only 3 applications have been granted special status under the program.

More information is available on the USPTO’s First-Time Filer page. The Federal Register notice announcing the program can be read here.

Melissa Mitchell is an intellectual property attorney in the MVS Biotechnology and Chemical Practice Group. To learn more, visit our MVS website, or contact Melissa directly via email.