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IP Cases & Commentary – Details

1 February 2012

Track One Has Arrived - Prioritised Examination at the USPTO

Cathrine McGowan

In our August 2010 newsletter, we described the United States Patent and Trademark Office’s (USPTO) plans to introduce a three-track procedure for patent examination. The plans aimed to give applicants greater control over the speed and timing of the examination of their patent applications. The Track 1 procedure, named Prioritised Examination, is now in operation.

Prioritised examination became available on 26 September 2011, following the enactment of the Leahy-Smith America Invents Act. An applicant who makes a request for prioritised examination can expect a final result for their patent application within twelve months. The final result includes the issue of a notice of allowance, or the issue of a final office action giving the Examiner’s final reasons for rejection.

There are a number of conditions for obtaining and maintaining prioritised examination:

  • You must pay the official fee, currently USD 4,800 (USD 2,400 for small entity applicants).
  • You must submit the request for prioritised examination at the time of filing the application.
  • Your application must be fully complete on filing, including payment of all official fees, and must be filed electronically.
  • Your application can be any original non-provisional application, including divisional, continuation and continuation-in-part applications, and applications claiming priority from earlier US or foreign applications. International (PCT) applications entering the US national phase are currently excluded.
  • You must limit your application to a total of thirty claims, including no more than four independent claims and no multiple dependent claims. Any amendment during examination that exceeds these limits will terminate the prioritised examination.
  • If you file a request for an extension of time for responding to an office action, the prioritised examination will be terminated.
  • If you file a notice of appeal or a request for continued examination the prioritised examination will cease.

An annual limit of 10,000 requests for prioritised examination has been set, although there is scope for revising this upwards in the future. The USPTO maintains statistics on its website so that applicants can check if the limit has been exceeded before submitting a request.

At an initial rate of around 300 requests per month, it seems unlikely that this will happen.

More recently, on 19 December 2011, the USPTO extended the prioritised examination procedure to the continued examination of patent applications. If an applicant receives a final office action on his application, he can generally only make amendments to address the rejections in the office action by filing a request for continued examination (RCE) and paying the associated official fee. As mentioned above, filing an RCE terminates the prioritised examination. It is now possible to submit a new request for prioritised examination to accompany the RCE, together with a further prioritised examination official fee. Additionally, you can submit a request for prioritised examination if you file an RCE on an application not previously processed under Track 1. This makes the speedier examination process available to applicants who declined to use the procedure when originally filing their applications. Interestingly, you can request prioritised examination for an RCE filed on an application that is the national phase of a PCT application, despite the exclusion of national phase applications from prioritised examination requests made at the time of filing.

Requesting prioritised examination for an RCE is largely the same as making a request when filing an original application. However, unlike with an original application, there is no requirement to submit the request at the same time as the RCE. Rather, you can file the request at any time up until the first office action of the continued examination is issued. You are only permitted to file one request for prioritised examination with an RCE per application.

Further information can be found in the 23 September 2011 and 19 December 2011 editions of the Federal Register, and in a useful set of FAQs provided by the USPTO.

Useful links

Federal Register 23/09/2011
Federal Register 19/12/2011
FAQs

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