In furtherance of HRO’s February 7, 2011 Alert regarding the United States Patent & Trademark Office’s (“USPTO”) proposed 3-track examination, the USPTO announced the final rule regarding this matter. Track I of three tracks provides for the option for prioritized patent application processing. (See Changes to Implement the Prioritized Examination Track (Track I), 76 Fed. Reg. 18399 (Apr. 4, 2011) (explaining the details of Track I)).

In short, as of May 4, 2011, the USPTO will accept filings for a request for prioritized examination of any original utility or plant application under Track I of the prioritized examination process. The USPTO has limited the number of applications that may receive prioritized examination to 10,000 for the fiscal year 2011. The fee to request prioritized examination is $4,000, plus a $130 processing fee. These fees along with the normal application filing fees, the publication fees and an executed oath or declaration must be submitted when the application is filed. Currently, there is no small entity discount for prioritized examination and processing fees. However, it is possible that such a discount may be approved in the future.

An applicant’s benefit of utilizing Track I is to obtain faster examination of applications. The goal for prioritized applications is to receive a final disposition within 12 months from the granting of priority status. Final disposition of such applications include:

  • Issuance of a Notice of Allowance;
  • Issuance of a Final Office Action;
  • Filing of a Notice of Appeal;
  • Declaration of an interference by the Board of Patent Appeals and Interferences;
  • Filing of a Request for Continued Examination; or
  • Abandonment of the application.

It is important to note that prioritized examination does not provide for prioritized status for the life of the pending application. For example, special prioritized status is not provided for during an appeal or an interference proceeding. Additionally, if an extension of time to extend the period for filing a reply is filed, the application’s prioritized status will be terminated.

At this time, the USPTO has not released any further information on Proposed Tracks II and III of the Prioritized Examination process. We will provide an update when that information becomes available.

For more information about this or any other patent related issues, please contact Holme Roberts & Owen LLP at 303-861-7000.