The United States Patent and Trademark Office (“USPTO”) has implemented a new Prioritized Examination Program, which, unlike previous accelerated examination initiatives, imposes a relatively low burden on applicants. Under the Prioritized Examination Program, applicants who are willing to pay the USPTO fees, can move their applications to the head of the queue, thereby reducing the pendency of an application from the typical three years to one year.1
There have been a number of programs implemented by the USPTO aimed at expediting the review of certain patent applications. Most of those programs, however, are available only for narrow classes of applications, and those that are more widely available place a large burden on applicants such that they are not frequently utilized. For example, the Accelerated Examination Program, which was implemented in 2006, requires applicants to conduct a pre-examination search of U.S. patents and published applications, foreign patent documents, and non-patent literature and to include all relevant documents uncovered in the search in an information disclosure statement (IDS) filed with the application.2 Applicants must also file an Accelerated Examination Support Document that includes, among other things, an identification of all limitations in the claims that are disclosed by each of the references listed in the IDS.3 Further, applications submitted under the Accelerated Examination Program are limited to three independent and twenty total claims.
Since its advent, only about 5,000 applications have been filed with a petition for accelerated examination.4 Applicants may be reluctant to utilize this program because conducting the required pre-examination search, analyzing the references that are identified in the search, and preparing the examination support document could significantly increase the time and cost associated with the preparation of a patent application. Additionally, if the resulting patent is litigated, an opposing party may attempt to use positions taken in the examination support document against the patent holder. An applicant considering filing an application under the Accelerated Examination Program should consider this risk before filing.
The Accelerated Examination Program does, however, have its benefits. For example, the Accelerated Examination Program both prioritizes prosecution by placing the application ahead of other applications in an Examiner’s queue and accelerates prosecution by shortening the response time from three months to one month. The USPTO’s stated goal is to complete examination of applications submitted under the Accelerated Examination Program within twelve months from filing — the average time from filing to final disposition of a regularly filed application is approximately three years.5 Additionally, applications submitted under the Accelerated Examination Program will likely include claims that are carefully tailored to avoid the references identified in the pre-examination search, which may reduce the number of office actions and responses required before an application is allowed. Thus, despite the increased cost of preparing an application to be filed under the Accelerated Examination Program, fewer office actions and responses may result in an overall cost similar to that of a non-accelerated application. As a result, the Accelerated Examination Program may be a good option for an applicant that would like to quickly obtain a patent with very targeted claims to protect a strategic product.
In contrast, the new Prioritized Examination Program, which was implemented in September 2011 pursuant to the Leahy-Smith America Invents Act, has received a more positive reception. Over 6,000 applications have been submitted under this Program6 despite the fact that applicants must pay an additional $4,800 fee ($2,800 for small entities) to file an application under the Prioritized Examination Program.7 The increased utilization of the Prioritized Examination Program is likely due to the fact that it does not require applicants to conduct a pre-examination search or submit an examination support document.
The Prioritized Examination Program prioritizes the prosecution of an application by permitting the application to be placed ahead of other applications in an Examiner’s queue, but does not accelerate the prosecution — applicants are afforded the normal three-month response time. As in the Accelerated Examination Program, the USPTO’s stated goal for the Prioritized Examination Program is to provide a final disposition within twelve months of the time the application is granted prioritized status.8
A request for prioritized Examination may be submitted in conjunction with any nonprovisional utility or plant application filed under 35 U.S.C. § 111 (including a continuation, continuation-in-part, or divisional application) or under 35 U.S.C. § 371, provided the application does not contain more than four independent claims, more than thirty total claims, or any multiple dependent claim.9 If a request for prioritized examination was not initially filed with the application, it may be filed with or after a request for continued examination (“RCE”), so long as the request is filed before the mailing of the first Office Action after filing of the RCE.10 There is, however, a limit on the number of applications that may be prosecuted under the Prioritized Examination Program. Only 10,000 applications per year may be granted prioritized status—this limit applies to all granted requests for prioritization, whether granted in conjunction with a newly filed application or an RCE.11 This limit was not reached during fiscal year 2012, with just over 5,000 applications seeking prioritization, but the USPTO expects this number to increase for fiscal year 2013.
Applications proceeding under the Prioritized Examination Program are afforded the normal three-month response time, but any request for an extension of time results in the application being removed from the Examiner’s prioritized docket and placed on the Examiner’s regular prosecution docket. Applications may also be removed from the Prioritized Examination Program if: (1) the application is amended such that it contains more than four independent claims, more than thirty total claims, or a multiple dependent claim; (2) an RCE is filed (though a new request for prioritization may be submitted with the RCE); (3) a notice of appeal is filed; (4) a request for suspension of action is filed; (5) a notice of allowance is mailed; (6) the application is abandoned; or (7) examination is otherwise completed.
The obvious disadvantages of the Prioritized Examination Program are the increased cost as compared to both the Accelerated Examination Program and the USPTO’s customary filing fees and the inability to request an extension of time. The new Prioritized Examination Program may be a good option, however, for applicants who are willing to pay to shorten the pendency of their application, desire a higher number of claims than that allowed under the Accelerated Examination Program; and/or wish to avoid the burden associated with conducting a pre-examination search and preparing an examination support document.