USPTO's Prioritized Patent Examination

One feature of the recently enacted America Invents Act is the implementation of the Prioritized Patent Examination program. This program was previously placed on hold in April 2011, but is now available to applicants. 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 12 months of being given prioritized status. The additional government fee to enter the program is quite significant and currently set at $4,800 per application for large entities or $2,400 per application for small entities.

To qualify for prioritized examination, the following requirements must be met:

  • 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 or reexamination applications or 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 applicant must request prioritized examination and pay the associated fee ($4,800 or $2,400), in addition to paying 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).

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 for an extension of time for filing a reply or files a request for continued examination or notice of appeal.