IP Alerts

IP Alert
IP Alert: USPTO Provides for Prioritized Patent Examination

December 29, 2011

The U.S. Patent and Trademark Office (USPTO) has issued new rules to provide for expedited processing of certain applications. Under the existing prioritized examination rules, applicants can request prioritized examination for certain new patent applications. The new rules expand the prioritized application program to provide for prioritized examination for existing applications after the filing of a request for continued examination (RCE). The rules became effective on December 19, 2011, and are applicable to presently pending applications, subject to an annual USPTO-imposed limit of 10,000 requests for prioritized examination.

Applicants can request prioritized examination for utility and plant patent applications but not for design applications and not for patents in reexamination. Under the new rules, an applicant may request prioritized examination within twelve months from the date of filing of an RCE. The request ordinarily must be filed via the USPTO’s electronic filing system and must be filed before the mailing of a first Office Action after the RCE has been filed. At the time of filing the request, the application may not contain more than four independent claims and thirty total claims, and may not contain multiple dependent claims (i.e., claims that depend upon two or more other claims in the alternative). The USPTO fee for filing a request for prioritized examination is $4,800 ($2,400 for small entities) plus processing and publication fees.

After accepting a request for prioritized examination, the USPTO places the application on the examiner’s special examination docket, where it will be examined out of sequence and with special dispatch. The application will cease to be accorded special status upon reaching a final disposition, which includes mailing of a final Office Action or notice of allowance, or the filing of a subsequent RCE or notice of appeal. Additionally, if the application is amended to increase the number of claims beyond the proscribed limit, special status likewise will cease. Only a single request for prioritized examination will be granted in an application.

The prioritized examination procedure is a relatively expensive option, but for some applicants the benefit of prioritized examination will outweigh the expense. In particular, prioritized examination allows an applicant to seek special status without also imposing additional burdens regarding prior art searching and reporting. If you are interested in more information on prioritized examination, please contact Fitch Even partner Steven G. Parmelee.

Written by Fitch Even attorney Jonathan C. Hughley

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