In April 2011, the Office finalized rules providing for prioritized examination, but had to delay the effective date due to lack of funding. Section 11 of the America Invents Act expressly provided for the Office to institute prioritized examination (Track I).
Before the America Invents Act, the Office was working to develop a three track system for examining new patents. Track I was prioritized examination, which aimed to provide a final disposition on an application within twelve months of the granting of prioritized examination. Track II was the regular examination procedure. Track III, if requested by the applicant, would provide for the application examination to be delayed by as much as thirty months. In April 2011, the Office published final rules regarding prioritized examination, but had to delay the effective date because the lack of funding would have led to delays in the examination of non-prioritized applications.
Prioritized examination was adopted by the America Invents Act and can now be utilized by new utility or plant applications. Prioritized examination may also be granted in a request for continued examination (RCE) in a plant or utility application.
To obtain prioritized examination, an applicant must pay a fee of $4,800 (small entity is 50%; no mention of micro entity) on top of the fee for regular examination. The application cannot contain more than four independent claims or thirty total claims with none of those claims being multiple dependent claims.
Once granted, the application is according special status and is placed in the examiner’s special docket, where it will remain throughout the entire course of pendency. Prioritized examination will be terminated, and the application will be entered into the regular application process (Track II), if the applicant files a petition for an extension of time, request for continued examination, request for suspension of action, notice of appeal, or amends the application to include more than four independent claims, more than thirty total claims, or any multiple dependent claims. No refund will be given if the applicant’s acts terminate prioritized examination.
This procedure does not replace accelerated examination, which will continue to be a tool for applicants who meet its special requirements. Also, the America Invents Act limits the number of applications that can be given prioritized examination to 10,000 per fiscal year. The Office has the authority to adjust this limit as it sees fit.
Upcoming Events/Key Dates
Prioritized examination for new utility and plant applications went into effect on September 26, 2011. Prioritized examination for request for continued examinations went into effect on December 19, 2011.