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Prioritized Examination Under Leahy-Smith
June 15, 2012

The America Invents Act, signed into law on September 16, 2011, finally established funding for the U.S. Patent and Trademark Office’s (USPTO) “Track One” prioritized patent examination procedure that was announced in May 2011. With the AIA funding, the Track One procedure has been available for utility and plant patent applications since September 26, 2011.

For eligible applications, the USPTO will issue its final disposition within 12 months. To receive Track One “special status,” however, an application must meet certain requirements and conditions, as the USPTO seeks to limit the number of prioritized examination requests to 10,000 per fiscal year. In particular, an applicant must request prioritized examination at the start of the filing process.

Unlike the USPTO's Accelerated Examination program, implemented in 2006, the new prioritized examination process does not require a pre-examination search or a rigorous support document.

As of December 11, 2011, the procedure may also be sought once with a request for continued examination (RCE). Provisional, design, reissue, and reexamination applications are ineligible for Track One, as are cases already pending and cases arising via the international Patent Cooperation Treaty.

Below is a summary of important points for successfully using prioritized examination.

Completeness of Application
The application must be complete at the time of filing and must include:

  • Payment of appropriate fees (see below);
  • A valid, executed oath or declaration;
  • A specification, fully compliant with the rules, and compliant claims (see below);
  • Formal drawings;
  • Electronic submission of sequence listings, large tables or computer listings;
  • If applicable, a foreign priority claim should be identified in the executed oath or declaration or application data sheet; an English translation of the priority document and a statement certifying the accuracy of the translation may also be required, along with—pending further clarification in the rules—a processing fee due under 37 CFR 1.17(i); and,
  • A domestic priority claim and appropriate statement in the specification or on an application data sheet (ADS).


Claim Limitations
Claims are restricted in applications being considered for prioritized examination:

  • No more than four independent claims.
  • No more than 30 total claims.
  • No multiple dependent claims.


Fees, Source Documents, and Requirements
Applicants must pay additional fees and prepayment of the publication fee with a request for prioritized examination.
 

Large Entities Small Entities
Track I fee $4,800.00 Track I fee $2,400.00
Processing fee $130.00 Processing fee $130.00
Publication fee $300.00 Publication fee $300.00
Base filing fee $380.00 Base filing fee $95.00
Search fee $620.00 Search fee $310.00
Examination fee $250.00 Examination fee $125.00
Total: $6,480.00

Total: $3,360.00


Prioritized examination fees total about $5,100 more than large-entity filing fees and about $2,700 more than small-entity filing fees for standard “Track Two” examination. The small-entity filing fee is slightly more than half the total of the large-entity fees because processing and publication fees are the same for both large and small entities. These totals include the $300 publication fee normally not due until receipt of a USPTO notice of allowance. Note that the base filing fee for e-filing by small entities is already reduced to less than half the large-entity fee, regardless of whether prioritized examination is sought.

If an applicant’s request for prioritized examination is dismissed as improper, the USPTO will automatically refund the filing fees, but not the processing fee. Utility applications must be filed electronically for prioritized examination, while plant patent applications must be filed on paper.

Loss of Prioritized Status
An application will lose its prioritized examination status if the applicant receives any of the following:

  • Notice of incomplete application;
  • Notice to file missing parts;
  • Notice to file corrected application papers;
  • Notice of omitted items; or
  • Notice of informal application.
     

Status also will be lost if the applicant:

  • Files a request for continued examination (RCE) following a notice of final rejection from the USPTO;
  • Files a notice of appeal;
  • Adds a fifth independent claim;
  • Adds a 31st claim;
  • Adds a multiple dependent claim;
  • Does not meet documentation deadlines; or
  • Requests a suspension of action.


Strategies
The following are potential strategies for applicants pursuing prioritized examination:

  • Pursue prioritized examination to quickly ascertain patentability of an invention. Depending on the outcome, this strategy may obviate the need for foreign filings and related fees.
  • If invention is not a strong candidate for a patent, do not publish the data with the USPTO, where it will become available to the public. Instead, maintain the innovation as a trade secret.
  • Following a successful prioritized examination, pursue Patent Prosecution Highway (PPH) proceedings to rapidly acquire patent rights in foreign cases.
  • Apply for a patent with narrow claims under prioritized examination, followed by a continuation application with broader claims. but without prioritized examination.
  • For a previously submitted application, request prioritized examination of a follow-on “continuation” application that follows and augments the previously filed application. This could include a continuation of a U.S. application arising through the international Patent Cooperation Treaty (PCT) application process, although the original PCT applications themselves are not eligible for prioritized examination.

More information may be found at: http://www.uspto.gov/aia_implementation/faq.jsp.
 

If you have any questions or wish to discuss how the AIA legislation may impact you, please contact your Brinks attorney.

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This Strategy Briefing is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

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