USPTO Discontinues Accelerated Examination for Utility Applications: What IP Professionals Should Know
Tools to expedite US prosecution are becoming a little more expensive
The United States Patent and Trademark Office (USPTO) recently announced a final rule in the Federal Register to discontinue the Accelerated Examination (AE) program for utility patent applications. This change, effective July 10, 2025, continues the trend by the USPTO in their goal to optimize examination resources and enhance the overall efficiency of the patent examination process. IP owners, patent practitioners, and inventors should understand the implications of this adjustment.
USPTO’s Proffered Purpose for the Rule Change
The primary objective of this final rule is to reallocate examination resources more efficiently, aiming to reduce overall patent pendency. Accelerated Examination has been around in its current form since 2006.
According to the Federal Register, the USPTO's decision reflects a recognition of the popularity and efficacy of the existing statutory Track One prioritized examination program. By discontinuing AE for utility applications, the USPTO can streamline processes and dedicate resources to examining older applications, which should contribute to reducing the backlog that has grown since 2019. The rule also clarifies the specific grounds for fee-exempt "petitions to make special."
Effective Date and Implications
The discontinuation of the AE program for utility applications will take effect on July 10, 2025. On or after this date, the USPTO will no longer accept petitions under the Accelerated Examination program for utility applications. According to the published rule, this effective date provides applicants who may be currently preparing an Accelerated Examination petition with sufficient time to finalize and file it before the program officially concludes.
Accelerated Examination: Demanding Requirements
For many years, the USPTO offered the Accelerated Examination (AE) program to expedite utility patent application reviews, aiming for a final disposition within twelve months. Despite this appealing promise, the program imposed significant burdens on applicants. Key detriments included a requirement for extensive, on-the-record characterizations of prior art and claims, often before substantive examination.
This involved a comprehensive pre-examination search and the submission of an Accelerated Examination Support Document (AESD), which mandated detailed prior art mapping and explicit patentability arguments for each claim. Applicants also had to demonstrate where each claim limitation found support in the specification under 35 U.S.C. 112(a). The program also enforced strict procedural compliance, such as limits on claim numbers and no provision for withdrawing from accelerated status.
These demanding, front-loaded requirements and a high denial rate, with approximately one-third of petitions denied in fiscal year 2024, often made the AE program more costly and complex than beneficial. This complexity, coupled with its low utilization—fewer than 100 requests annually from fiscal years 2014 to 2024—and the growing popularity of the more streamlined Track One program, ultimately led the USPTO to a decision to discontinue AE for utility applications, effective July 10, 2025.
USPTO’s Reasons for Discontinuation of AE
The USPTO's decision to discontinue the AE program for utility applications is multifaceted, stemming from several key observations and operational considerations:
Low Usage: The AE program has experienced minimal participation, with fewer than 100 applicants utilizing it annually from fiscal years 2014 to 2024. This low uptake suggests that the program was not meeting a widespread need for expedited examination.
Availability of Track One: The prioritized examination program (Track One), introduced in 2011, has emerged as a significantly more popular and accessible alternative for applicants seeking expedited examination. Track One offers a more straightforward process, devoid of the complex requirements associated with AE, such as a pre-examination search and an examination support document.
Resource Demands: The AE program proved to be resource-intensive for the USPTO. Deciding petitions and monitoring compliance throughout prosecution diverted substantial technology center resources that could be more effectively applied to examining older applications and reducing overall pendency.
Inefficiency: A notable portion of AE petitions (approximately one-third in fiscal year 2024) were denied, incurring costs for both applicants and the USPTO with minimal benefit.
Pendency Reduction Efforts: Discontinuing AE allows more examining resources to be dedicated to older, unexamined utility applications, supporting the USPTO's broader efforts to reduce overall first-action pendency.
Track One Versus Accelerated Examination
Track One, also known as the prioritized examination program, was implemented in 2011 under the America Invents Act (AIA). It allows for the advancement of any utility or plant application out of turn by paying a fee. Key distinctions from the Accelerated Examination program include:
No Pre-examination Search/Support Document: Unlike AE, Track One does not necessitate applicants to perform a pre-examination search or provide an examination support document, simplifying the application process.
Fee-based: Expedited examination under Track One is obtained by paying a fee, whereas the original AE program allowed for fee-exempt petitions under specific circumstances (e.g., for certain environmental or energy-related inventions).
Popularity: Track One has proven significantly more popular, with its annual request limit increased multiple times to meet demand, indicating its preference among applicants for expedited examination. According to the Federal Register, Track One has shown significantly higher usage rates than the AE program.
Expedited Examination for Environmental, Energy, and Counter-Terrorism Inventions
With the discontinuation of the Accelerated Examination program for utility applications, applicants seeking expedited examination for inventions that materially enhance the quality of the environment, contribute to the development or conservation of energy resources, or contribute to countering terrorism can still do so through the Track One program under 37 CFR 1.102(e).
While Track One requires a fee, it eliminates the need for preparing and filing an examination support document, which was a requirement under the AE program for these types of inventions.
Qualified small and micro entity applicants receive significant discounts on the Track One fee. According to the published rule, this ensures continued support for these important areas of innovation.
Remaining Grounds for Fee-Exempt "Petitions to Make Special"
Following this rule change, the only remaining grounds for filing a petition to make an application special without a fee are based on the inventor's or a joint inventor's age or health.
According to the Federal Register, this clarification updates the rule to reflect the distinction between "inventor" and "applicant" post-AIA, ensuring that it is specifically the inventor's or a joint inventor's condition that is relevant for a fee-exempt petition.
Impact on Design Patent Applications
It is important to note that this rule change does not affect design patent applications. According to the published rule, the Accelerated Examination program will remain in effect for design applications, as they do not currently have an alternative expedited examination program comparable to Track One for utility applications.
This shift by the USPTO highlights an ongoing effort to streamline patent examination processes and adapt to the evolving needs of the IP community. While the AE program for utility applications will no longer be available, the prevalence and efficiency of the Track One program offer a robust alternative for those seeking expedited examination.
Patent practitioners and inventors should likely consider adjusting their strategies accordingly, relying on Track One for accelerated examination needs for utility applications.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.