The implementation of the America Invents Act last September 2011 provided for a new prioritized examination process for patent applications at the US Patent and Trademark Office. This prioritized examination, also known as Track I, allows for an applicant to obtain a speedy process through prosecution that promises to provide a final disposition of the application within 12 months. After using this option in several applications over the last year, I believe there are many times where this is a valid option. However, it does have limited applicability.
Prioritized examination requires that the option be filed at the time the original application is filed with the Patent Office, or at the time of filing a Request for Continued Examination (RCE). The application must contain no more than four independent claims, no more than thirty total claims, and no multiple dependent claims. The request must include the prioritized examination fee, which is currently $4,800 for large entity ($2,400 for small entity), as well as the various other filing fees (basic filing fee, search fee, and publication fee). Interestingly, the publication fee is required even when a request for non-publication is filed with the application.
Prioritized examination is only available to the first 10,000 requesters for each PTO fiscal year. However, this has not yet been an issue as the number of requesters thus far using the system is well below this limit. In Fiscal Year 2012, a total of 5,036 requests were filed. Thus far in 2013, a total of 128 requests have been filed. The Patent Office maintains the current statistics on the number of requests filed for each fiscal year.
The obvious advantage of this option is the speed in which a first examination if received from the Patent Office. The program attempts to provide the first examination within 3-4 months. In the majority of the applications that I have filed under this option, this time window has been met. However, the last few applications have seen the first examination taking longer, more in the 5 month range. I do not have enough data to determine if the delay is dependent upon the Art Unit performing the examination, or if the system is not as speedy as when it initially started.
Another advantage is this option merely requires the payment of the prioritized examination fee. There are not requirements for a pre-examination search, a support document differentiating the prior art, or a requirement for restrictions to be elected without traverse which are included in the accelerated examination procedure. Further, the option is available to any application and not just those specifically defined for a Petition to Make Special (applicant’s age or health, the invention will materially enhance the environment, conserve energy, or counter terrorism).
One good context for using this option is when a client is determining whether to file for foreign patent protection. It is very beneficial to have an initial examination in the U.S. upon which to base this determination.
The biggest disadvantage is that the prioritization of the application only lasts until final disposition. In the event prosecution leads to a final rejection, the applicant does not receive priority for any appeal or continuing examination (unless another fee is paid at the time of filing an RCE). Therefore, it is important for the application to have carefully crafted claims at the time of filing. A minimum amount of prosecution is desired to keep the application on the prioritized track. This option may not be best if one is attempting to obtain broad patent protection relative to the art within the area. Further, this may not be the best option if one has not done any prior art searching prior to filing the application.
Prosecution of the application requires a response to any rejection to be filed within three months. Extensions are available, however this will result in the application falling out of the prioritization program. Therefore, if there is any foreseeable reason why a response cannot be answered within a three-month window, then this may not be an attractive option.
Another drawback is the rather large examination fee required for this option. $4,800 for a large entity ($2,400 for small) is a hefty price and may not be affordable for many applicants.