IP Alerts

April 21, 2011

UPDATE: Today in a message to USPTO employees, USPTO Director David Kappos announced budget cuts to the agency totaling approximately $100 million. As a result of these cuts, a number of changes will be made, including the indefinite postponement of the "Track One" expedited patent examination program previously scheduled to begin on May 4, 2011, as detailed in the IP Law Alert posted below on April 5.

April 5, 2011

The U.S. Patent & Trademark Office (USPTO) has instituted a new procedure for “prioritized examination” of patent applications. Beginning May 4, 2011, applicants who wish to have a patent application examined on an expedited basis may file a request for prioritized examination. The fee for the prioritized examination is $4,000. Once the application is granted status as a prioritized application, the USPTO indicates that it will provide a final disposition (i.e., a notice of allowance or final rejection) within twelve months.

The prioritized examination procedure is voluntary, and applicants may still file applications under the regular fee schedule. Significantly, unlike the existing accelerated examination procedure, the applicant may obtain accelerated examination without performing a prior art search and without making representations regarding the state of the art.

The prioritized examination procedure, while expensive, may lead to examination one to two years ahead of a regularly filed patent application. This may provide advantages for certain patent applicants, such as start-up companies or companies anticipating known infringers.

The USPTO states that the prioritized examination procedure may delay the examination of nonprioritized patent applications, but only through the end of fiscal year 2011. For subsequent years, the USPTO states that it plans to hire additional examiners so that the prioritized examination procedure will not diminish other available examining resources.

Prioritized examination comes with several restrictions: 

1. The application must be complete upon filing, including the inventor’s declaration, and the filing fees and the fee for prioritized examination must be submitted at that time.
2. The application must be filed with no more than four independent claims and thirty claims total. If these claim totals are surpassed by later amendment, the application will lose its status as a prioritized application.
3. The application also will lose its status as a prioritized application if the applicant requests an extension of time in response to an office action.
4. A maximum of 10,000 applications will be accepted into the program during the remainder of fiscal year 2011.
5. Prioritized examination is available for new patent applications and for continuing applications, but not for national stage applications or reissue applications. The procedure is inapplicable to patent reexaminations.

For more information, please contact Fitch Even partner Joel H. Bootzin, the author of this alert.