The United States Patent and Trademark Office (“USPTO”) recently announced a procedure for prioritized examination of patent applications, which allows applicants to have an application examined out of turn by paying an additional $4,000 fee and satisfying other procedural conditions. The stated goal of the prioritized examination system is to provide applicants with a final disposition within 12 months of prioritized status being granted. The USPTO claims that the full cost of the program will be funded by the additional fees collected so that USPTO resources are not diverted from non-prioritized applications. The prioritized examination procedure will go into effect on May 4, 2011.
Under prioritized examination, an application will be given special status and examined out of turn until a final disposition is reached in the application. The USPTO defines a “final disposition” as including: (1) mailing of a final Office action; (2) filing of a notice of appeal; (3) filing of a request for continued examination; (4) mailing of a notice of allowance; or (5) declaration of an interference. Unlike the current accelerated examination program and the Patent Cooperation Treaty – Patent Prosecution Highway, an application under prioritized examination will not be given special status after filing of a request for continued examination or an appeal.
The requirements for prioritized examination include the following:
- The application must be a new original utility or plant application filed on or after
May 4, 2011. Prioritized examination does not apply for Section 371 national phase applications, design applications, reissue applications, or reexamination proceedings. An applicant may request prioritized examination for a continuing application, but a continuing application will not be given prioritized status based on a request filed in the parent application.
- The application must be complete upon filing and include the oath or declaration and all necessary fees.
- The application must contain no more than four independent claims and must not include any multiple dependent claims.
- The request for prioritized examination must be filed with the application and include the $4,000 prioritized examination fee.
- The USPTO is limiting the request for prioritized examination to a maximum of 10,000 applications starting May 4, 2011 through the remainder of the fiscal year ending September 30, 2011.
If the request for prioritized examination is granted, an applicant will have a three month shortened statutory period for responding to Office actions, with extensions of time available. However, if the applicant files a request for an extension of time, the prioritized status of the application will be withdrawn.
Currently, the $4,000 prioritized examination fee is not reduced for small entities. However, the USPTO announced that if the America Invents Act that was passed by the United States Senate is enacted into law, the USPTO would increase the prioritized examination fee to $4,800, but would reduce the fee to $2,400 for small entities.
Finally, the USPTO announced that the prioritized examination procedure is Track I of a planned three-track system. Track II examination would be traditional examination under the current procedures. By the end of September 2011, the USPTO plans to make available Track III, which would allow an applicant to delay examination for up to 30 months, presumably with deferred fees.