USPTO Implements Prioritized Examination Track under AIA

By Donald Zuhn --

Five months after postponing the launch date of the prioritized examination (or Track I) portion of the Enhanced Examination Timing Control Procedures Initiative, the U.S. Patent and Trademark Office announced on Friday that it would begin accepting requests for prioritized examination today.  The program was postponed in April due to "funding limitations," which would have prevented the Office from "meet[ing] the twelve-month pendency goal in prioritized examination applications without impacting the non-prioritized examination applications at this time" (see "USPTO Publishes Notice Regarding Prioritized (Track I) Examination Delay").

In a notice published in the Federal Register on Friday (76 Fed. Reg. 59060), the Office noted that "[t]he Leahy-Smith America Invents Act [AIA] includes provisions for prioritized examination [§ 11(h) of the AIA] that emulate the requirements of the Office’s Track I final rule, with revised fee amounts for prioritized examination (including a small entity discount) and a provision that addresses the funding limitations that required a delay in the implementation of the Track I final rule."  In April, the Office indicated that applicants would be allowed to request prioritized (or Track I) examination of an application for an additional fee of $4,000 beginning in May (see "USPTO to Launch Prioritized Examination on May 4th").  The start of the Track I program, however, was delayed when the President signed the FY 2011 budget, preventing the USPTO from spending $85-100 million in fees collected during the fiscal year.

The AIA sets forth a prioritized examination fee of $4,800, which applicants must pay in addition to filing, search, and examination fees (including any applicable excess claims and application size fees) and processing and publication fees (the prioritized examination fee for small entities is reduced by 50%).  In addition, the AIA specifies that to be eligible for prioritized examination, an application must contain (or be amended to contain) no more than 4 independent claims and no more than 30 total claims.  The AIA limits the number of requests for prioritized examination that the Director may accept to 10,000 per fiscal year.  Under the AIA, the effective date of the above changes is September 26, 2011 (i.e., 10 days after the date of enactment of the AIA).

While the Office will accord prioritized examination applications special status and place them on the examiner's special docket, the following actions taken by the applicant will terminate prioritized examination:

• Filing a request for continued examination (RCE);
• Filing a petition for an extension of time to file a reply;
• Filing a request for a suspension of action; or
• Filing an amendment that results in more than four independent claims, more than thirty total claims, or a multiple dependent claim.

To participate in the Track I program, applicants have to fulfill the following requirements:

• File a new original utility or plant nonprovisional application under 35 U.S.C. § 111(a) on or after September 26, 2011 (the procedure does not apply to international, design, reissue, or provisional applications, or reexamination proceedings, but can be used for continuing applications);
• File an application that is complete under 37 C.F.R. § 1.51(b), including the oath or declaration, and payment of the filing, search, and examination fees, any applicable excess claims fee, and any applicable application size fee at the time of filing;
• File the application via the Office's electronic filing system (EFS-Web);
• The application cannot contain more than four independent claims and thirty total claims or any multiple dependent claims;
• Request prioritized examination (preferably by using Form PTO/SB/424); and
• Pay the required fees for requesting prioritized examination at the time of filing (i.e., the prioritized examination fee set forth in 37 C.F.R. § 1.17(c), the processing fee set forth in 37 C.F.R. § 1.17(i), and the publication fee set forth in 37 C.F.R. § 1.18(d)).

For additional information regarding this topic, please see:

• "USPTO Publishes Notice Regarding Prioritized (Track I) Examination Delay," May , 2011
• "USPTO News Briefs," April 27, 2011
• "USPTO News Briefs," April 21, 2011
• "USPTO to Launch Prioritized Examination on May 4th," April 10, 2011
• "USPTO Provides More Details Regarding 'Three Track' Examination Proposal," February 7, 2011
• "USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative," June 14, 2010

Comments

[Carmela DeLuca]

Hi Don,

It seems odd (to me, but then I am a Canadian lawyer) that a distinction is made between a national application under § 111(a) and a national stage application under § 371. Presumably this is done as a way to limit numbers of eligible applications. You mention that continuation applications are eligible for prioritized examination. Does filing a continuation application of an international application instead of a national stage application allow access to the prioritized examination procedure?

Thanks Carmela
PS Great meeting you earlier this month.

[Donald Zuhn]

Carmela:

According to the USPTO's latest notice, the Office may open up the prioritized examination program to national stage applications at a future date. As you presumed, the USPTO noted that its rationale for excluding national stage applications was the need to limit the number of applications during the initial stages of the program. Finally, an applicant who has filed an international application can participate in the program by filing a by-pass continuation. Thanks for your comment.

Don

[patent litigation]

It's good to know that the Track One program is back in action. Though I wish the patent reform legislation had ended fee diversion, at least the bill is allowing the USPTO a fee hike, which will permit the patent office to implement initiatives (like the Track One program and the Detroit satellite office) that had been back-burnered.
http://www.generalpatent.com/blog/