Further to HRO’s September 16, 2011 Alert regarding the enactment of the America Invents Act, beginning today, September 26, 2011, the United States Patent and Trademark Office (“USPTO”) will accept filings for a request for prioritized examination of any original utility or plant application. 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 $4,800. This fee, plus the normal application filing fees, the publication fees and an executed oath or declaration must be submitted when the application is filed. Small entity discount for prioritized examination and processing fees is available.  

The benefit of prioritized examination is to begin the examination process right away and complete examination of the application in about one year after filing as opposed to starting examination anywhere from about two years (for some areas like mechanical) to about five years (for biotech) after filing. In addition, prioritized examination can lead to a longer term for the patent due to the complicated way the life of a utility patent is measured. A utility patent’s life starts when it issues, and as long as maintenance fees are paid, its life ends twenty years from the date when the application was filed (or an earlier priority date) and not from the date when it issued.  

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

In addition to the new USPTO prioritized examination program, applicants can still file a Petition to Make Special based on the age (over 65) or health of the applicant. These procedures have been in place for some time and are not replaced or eliminated.