Prioritized Examination of Patents Begins at the USPTO

USPTO-Image-164x164 Los Angeles – On September 26, 2011, the USPTO began accepting requests for prioritized examination of patent applications as a result of the enactment of the Leahy-Smith America Invents Act.

The goal of the prioritized examination program is to provide a final disposition on a patent application within twelve months of prioritized status being granted. A final disposition is considered: (1) mailing of a notice of allowance; (2) mailing of a final Office action; (3) filing of a notice of appeal; (4) completion of examination as defined in 37 CFR 41.102; (5) filing of a request for continued examination; or (6) abandonment of the application.

Under section 11(h), a $4,800 fee may be paid to establish prioritized examination of a nonprovisional application for an original utility or plant patent. This fee is in addition to the filing, search, examination, processing, and publication fees as well as any excess claim or application size fees.

This program is one of the ways in which the PTO plans on reducing the application backlog. However, there are limitations to the number and types of applications eligible for prioritized examination. The application may not contain more than four independent claims or more than thirty total claims. Additionally the PTO is currently limited to accepting only 10,000 applications per year for prioritized examination.

An applicant may lose prioritized examination status in several ways during the patent process, in which case the application is then placed in the examiner’s regular docket. The applicant may lose his/her status by filing a petition for extension of time to file a reply or a request for a suspension of action. Moreover, the applicant will lose his/her status when filing an amendment to the application that results in more than four independent claims, more than thirty total claims, or a multiple dependent claim. Additionally, it should come as no surprise that a loss of prioritized examination status would not entitle the applicant to a refund of the prioritized examination fee.

It will be interesting to see how many and which types of applicants will elect for prioritized examination. It is questionable whether the PTO will be able to live up to the twelve-month final disposition goal. The PTO initially wanted to implement a prioritized examination track earlier this year under a three-track program, but indefinitely postponed the plan due to budget cuts affecting examiner hiring. The PTO has already started accepting prioritized examination requests, but has yet to revamp hiring.




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