Today’s signing of the America Invents Act implements Prioritized Examination and creates a process for examining patent applications on a special accelerated track. Applications filed with a Request for Prioritized Examination will be placed on an examination track to reach final disposition within twelve months.

A Request for Prioritized Examination may be submitted with any original utility or plant application filed on or after Monday, September 26, 2011. The Request must be filed with the new application along with a Request fee of $4800 ($2400 for small entities, $1200 for new micro entities). The implementing rules allow first filings as well as continuing applications (e.g., continuations and divisionals). The "original utility or plant application" requirement excludes reissue and reexam filings from the Prioritized Examination process.

The implementing rules allow filing a continuation application that claims priority to a pending application along with a Request for Prioritized Examination and the Request fee. The rules do not allow a Request for Prioritized Examination to be filed with a new PCT national stage application under 35 U.S.C. 371. However, the rules do allow a so called bypass continuation application under 35 U.S.C. 111(a) to be filed with a Request for Prioritized Examination.

Unlike the USPTO's existing Accelerated Examination program implemented in 2006, the new Prioritized Examination process does not require a pre-examination search and does not require an accelerated examination support document (and the rigorous requirements for preparing the support document).

The newly enacted law limits the number of applications filed with a Request for Prioritized Examination to 10,000 applications during any fiscal year. This limit will be re-evaluated as additional regulations are developed for the Prioritized Examination process.

The USPTO will likely consider additional rules for implementing their Track III proposal - delayed examination - in view of the public comments. For an overview of the details of Prioritized Examination and the additional proposed examination tracks click here.