The U.S. Patent & Trademark Office (USPTO) will accept requests for prioritized examination of patent applications beginning on May 4, 2011

The USPTO recently announced a new track for prioritized examination of utility or plant patent applications. Under the new track, patent applicants will be able to request prioritized examination of their patent application by simply paying an additional fee to the USPTO and making sure that the new application meets certain requirements. The corresponding application will then receive prioritized examination to provide a final disposition within twelve months of prioritized status being granted. This is a significant option for applicants that want patent protection as quickly as possible. Rather than having to wait the three years that the USPTO currently estimates to process the average patent, an applicant is guaranteed a decision in twelve months.

The program begins on May 4, 2011, and the USPTO is liming the number of requests for prioritized examination to a maximum of 10,000 applications during fiscal year 2011, ending on September 30th. Consequently, any applicants wanting to request this examination should not delay.

Requirements for prioritized examination

The requirements for requesting prioritized examination of a patent application are as follows:

  1. The application must be a new original utility or plant non-provisional application filed under 35 U.S.C. 111(a) on or after May 4, 2011. Consequently, prioritized examination does not apply to international applications, design applications, reissue applications, provisional applications, and reexamination proceedings. In addition, a continuing application (e.g., a continuation or divisional application) will not automatically be given prioritized examination status based on the request filed in the parent application, although applicants may request prioritized examination for a continuing application as with any new application.
  2. The application must be complete when filed. That is, it must include a specification, drawings (if necessary), an oath or declaration, and the prescribed fees for filing the application. Further, if the application is a utility application, then it must be filed via the USPTO’s electronic filing system.
  3. The number of claims in an application under prioritized examination is limited to no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims.
  4. The request for prioritized examination must be filed with the prioritized examination fee. The fee for filing a request for prioritized examination is currently set at $4,000, and this is in addition to the patent fees that are due on filing. That is, the applicant must still pay the filing fees, processing fee and publication fee that are due for all non-provisional utility applications. As a result, the fee amount due for a utility patent application for which prioritized examination is being sought is $5,520 for a large entity or $4,892 for a small entity as long as the application has no more than three independent claims and twenty total claims.

Once prioritized examination has been granted, the USPTO will work to provide a final disposition of the application within twelve months of prioritized status being granted. A “final disposition” means that one of the following will occur within twelve months: (1) Mailing of a notice of allowance, (2) mailing of a final Office action, (3) filing of a notice of appeal, (4) declaration of an interference by the Board of Patent Appeals and Interferences (BPAI), (5) filing of a request for continued examination, or (6) abandonment of the application. Consequently, an application under prioritized examination will not be accorded special status throughout its entire course of appeal or interference before the BPAI, or after the filing of a request for continued examination.

In addition, the application may be removed from this track by actions taken by the applicant. That is, if the applicant files a petition for an extension of time to file a reply, the prioritized examination of the application will be terminated. In addition, prioritized examination will terminate if the applicant files an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim, or a request for a suspension of action.

Conclusion

Prioritized examination of an application can greatly accelerate the process for obtaining a patent, but at a substantial cost. Therefore, in determining whether to request prioritized examination, it is recommended that the applicant first acquire a good knowledge of the state of the prior art and be able to distinguish the invention from that art. If the applicant is confident that the invention meets the requirements for patentability, an application should be prepared with a clear description of the invention, listing the broadest claims to which the applicant believes the invention is entitled in view of the state of the prior art to the narrowest claims to which the applicant is willing to accept. Once the application is filed, expect a speedy result. As noted by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos, “Track One provides a comprehensive, flexible patent application processing model to our nation’s innovators, offering different processing options that are more responsive to the real-world needs of our applicants.”