January 4, 2012
USPTO's Prioritized Patent Examination - Update

One feature of the recently enacted America Invents Act is the implementation of the Prioritized Patent Examination (Track I) program. The USPTO's goal for applications under the new program is to provide a final disposition (e.g., a notice of allowance, final Office action, abandonment, etc.) within twelve months of being given prioritized status. The additional government fee to enter the program is quite significant (currently $4,800 per application for large entities or $2,400 per application for small entities).

To qualify for prioritized examination, a newly filed application must meet the following requirements:

• The application must be a U.S. nonprovisional application filed on or after September 26, 2011. The application can be a continuation, CIP, divisional or a by-pass continuation under 35 U.S.C. §111(a) based on a PCT application. Note that design, reissue, and reexamination applications and U.S. national stage applications filed under 35 U.S.C. §371 are not eligible for the program.
• At the time of filing, the application must be complete (e.g., filed with oath or declaration signed by all inventors and payment of all filing fees including excess claims fees).
• At the time of filing, the application must be accompanied by a request for prioritized examination and the associated fee ($4,800 or $2,400), in addition to the typical fees (i.e., processing fee, publication fee, basic filing fee, search fee, examination fee, and any excess claims fees or application size fees). Total government fees on filing, excluding any excess claims fees or application size fees, are $6,480 for large entities and $3,360 for small entities.
• The application must contain no more than four independent claims and no more than a total of thirty claims. Multiple dependent claims are not permitted. It is possible to meet this requirement by filing a preliminary amendment.
• The application must be filed via the USPTO's electronic filing system (EFS-Web).

Alternatively, the recently enacted USPTO rules allow an applicant to request prioritized examination concurrently with or after filing a request for continued examination (RCE) and before the mailing of a first Office action after the filing of the RCE. The other requirements noted above apply. Once the application is accorded special status after the filing of an RCE, it will be placed on the Examiner’s special docket throughout its entire course of continued prosecution before the Examiner until a final disposition is reached in the application. Only a single request for prioritized examination with or after filing an RCE may be granted in an application.

The program is initially limited to a maximum of 10,000 applications for the first year. Applicants should also be aware that prioritized examination terminates if an applicant files an amendment resulting in more than four independent claims, more than thirty total claims, or a multiple dependent claim, requests an extension of time for filing a reply, or files an RCE or notice of appeal.