Those familiar with prosecuting patent applications before the U.S. Patent & Trademark Office (PTO) will know that it can take an inordinate length of time to obtain a patent. Depending on the nature of the invention, it is not unusual for 3-5 years to pass before the PTO picks the case up for examination. That delay can sometimes have a severe impact to the applicant (i.e., patent owner) as to the marketability of the invention and the ultimate value of the patent; especially for software inventions that can be obsolete within a few years.

The PTO has always offered some technique to expedite the patenting process. Prior to the Leahy-Smith America Invents Act of 2011 (AIA), an applicant could accelerate examination for a number of reasons, including: the age (over 65 years of age) or health of the inventor; that the invention will enhance the environment, conserve energy resources, or for counter terrorism; prospective manufacture; or an actual infringement.

But most applications are not entitled to those specific provisions, and instead acceleration had to be based on a search for prior art. To do so, the applicant had to conduct a prior art search and submit a detailed statement of patentability over the located prior art. Though the PTO fees are reasonable, the analysis and statements regarding the prior art are onerous, time-consuming, and expensive to be prepared by a patent attorney, especially when coupled with the cost of the search. As a result, many applicants are not able to take advantage of this procedure.

The AIA introduced a new technique for accelerating examination, called Prioritized Examination. As of September 16, 2011, an applicant could request prioritized examination by simply paying the PTO a fee of $2,400 (double, if the applicant is a large entity having over 500 employees, or licenses the technology to a large entity). But despite the large PTO fee, the ultimate cost to file the petition is much less than relying on a prior art search since the burden on the attorney is substantially reduced. And, the applicant need not make any statement about prior art, which might negatively impact the scope of the patent claims.

Several restrictions are imposed to take advantage of the Request for Prioritized Examination procedure: the request must be submitted when the application is initially filed; the application must be complete, including PTO filing fees and submission of inventor's declaration; the application must be filed electronically; and, the application cannot have more than four independent claims and thirty total claims, or any multiple dependent claims. However, prioritized examination can be filed with a Request for Continued Examination (RCE), and during the national phase of an international application by filing a bypass continuation application.

The PTO set a goal to finally dispose of prioritized cases within twelve months of the request being granted. In the year that it has been available, the PTO reports that prioritized cases have received initial office actions within 1.64 months and final disposition within 5.19 months of the request being granted. We have also experienced a similar response time from the PTO, and note that the PTO has granted the requests themselves within 4-6 weeks of filing.

Accordingly, the AIA prioritized examination has proven to be an effective and simple way to quickly obtain examination of important patent applications. It should be recognized that since the prioritized case is examined in advance by several years, there is some chance that an earlier-filed application will subsequently be published or granted that could impact the scope of the prioritized patent. Accordingly, it is important that applicants file a continuation application to account for those later-surfacing but earlier filed patents, especially once the first-to-file law takes effect on March 16, 2013.