The Smith-Leahy America Invents Act was enacted into law by President Obama on September 16, 2011. A provision in the Act permits Applicants to file a request for prioritized examination with the U.S. Patent and Trademark Office (USPTO) beginning September 26, 2011. The procedure, referred to as “Track I” by the USPTO, permits an applicant to file a request, upon payment of a $4,800 fee, which can be reduced to $2,400 for small entities, to obtain disposition of an application within a twelve month period upon grant of the request. Prioritized examination can be requested when filing a non-provisional patent application, which includes continuing patent applications, specifically continuation and divisional patent applications, or a plant patent application. A request for prioritized examination under Track I cannot be made in a reissue application or an application entering the national stage under 35 U.S.C. § 371. Track I provides an opportunity for an applicant to advance prosecution of applications that may have significant commercial value, thereby obtaining patent rights generally sooner than through traditional examination. Owners of patent applications should consider whether prioritized examination would be useful to promote business objectives.

Requesting Prioritized Examination

On April 4, 2011 the USPTO published the Track I prioritized examination procedure and subsequently, on April 29, 2011, withdrew the procedure due to funding limitations. The America Invents Act includes a provision that is similar to the original Track I procedure, and the USPTO has retained that designation.

The request for Track I examination must be filed electronically with a complete application using a request form PTO/SB/424, which is available on the USPTO website. In addition to the request fee, a complete application includes any excess claim fees, any application size fees, an oath or declaration, the basic filing fee, the search fee and the examination fee. An application requesting or receiving Track I prioritized examination may not include multiple dependent claims, and may not have more than four independent claims nor more than thirty total claims.

Prioritized examination of an application will be terminated if an applicant files a petition for an extension of time to file a reply, a request for continued examination, a request for suspension of an action or an amendment to an application that results in more than four independent claims, more than thirty total claims, or a multiple-dependent claim. Applications granted prioritized examination will not be provided any special status during an appeal process or an interference proceeding.

The America Invents Act limits the number of applications for which the USPTO can grant prioritized examination under Track I to 10,000. Under the Act, the USPTO has the authority to reevaluate whether this number should be amended to permit additional, or fewer, applications requesting prioritized examination.

Track I is Different Than Accelerated Examination and Special Status

Track I prioritized examination is one means to advance examination of applications at the USPTO. It is considerably less cumbersome on an applicant than Accelerated Examination, which requires substantial search burdens and statements by the applicant regarding patentability of the claims under examination. Track I is also distinct from a USPTO procedure in which an applicant petitions to make special an application due to, for example, the age or health of the applicant; or an invention that materially enhances the quality of the environment, contributes to the development of energy resources or counters terrorism, which are advanced by the USPTO out of turn in examination but not guaranteed a final disposition within 12 months.

Goal of the USPTO and Considerations

The goal for processing applications under prioritized examination by the USPTO is to provide a final disposition within an average of 12 months of prioritized status being granted. A final disposition for the 12 month goal includes the following:

  • Mailing of a Notice of Allowance
  • Mailing of a Final Office Action
  • Filing of a Notice of Appeal
  • Filing a Request for Continued Examination
  • Abandonment of an application  

Applicants should consider exploring Track I as an option for examination of newly filed applications and continuations of applications that have been pending at the USPTO for lengthy periods of time. Currently, the USPTO has not established a limit on the number of times an applicant can request Track I examination for successive, continuing applications, but may, at a future date, limit the number of requests in particular technologies and by any one applicant.

Resources for Track I

Please contact a patent attorney to discuss the possible use of the Track I option in continuing and future applications. Please click on the following link to the USPTO for information on the Track I prioritized examination http://www.uspto.gov/news/pr/2011/11-51.jsp.