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.
–Written by Fitch Even attorney Jonathan C. Hughley