For relatively modest additional fees of about US$ 5,000 the US Patent and Trademark Office (USPTO) now offers swift review of a patent application via a new programme called Prioritized Examination.
Prioritized Examination allows patent applications to avoid the normal delay of up to several years before an application is taken up by a USPTO examiner for review and can be surprisingly swift. According to USPTO statistics, as of 23 January 2012, the USPTO has already completed examination and approved for grant forty-one applications filed under the Prioritized Examination track. This represents a very short timeframe, given the service first became available four months earlier on September 26, 2011.
Prioritized Examination is available for a new US application, whether original or a continuation of a prior US application. Prioritized Examination is also available, however, for a Request for Continued Examination (RCE). An RCE is filed after the USPTO issues a final rejection such that examination is considered closed. By filing an RCE the applicant can present additional evidence, claim amendments, and arguments to convince the USPTO examiner to allow the application.
RCE’s are treated as new applications on the examiner’s calendar, so considerable delay may result. That delay disappears, however, if the applicant requests Prioritized Examination of the RCE. An RCE can be filed with a request for Prioritized Examination even if the original application was not.
Contrast with accelerated pathway
In contrast to the pre-existing but heavily criticized “Accelerated Examination” pathway, the requirements for obtaining Prioritized Examination are not particularly burdensome. To qualify for Prioritized Examination the application must contain a maximum of 30 claims, with no more than four of these being independent claims. This threshold exceeds the maximum of 20 total claims including three independent claims before additional claims fees apply, which might have been the expected maximum for Prioritized Examination.
Also, the application must not contain multiple dependent claims (while popular in European applications, multiple dependent claims are generally best avoided in US practice). Finally, the application must be complete upon filing. This means the filing must include, for example, an inventor oath/declaration and all required fees.
Prioritized Examination is also available for plant patents. Prioritized Examination is not formally available for national stage filings of international applications. This restriction can be easily overcome, however, by filing a “by-pass continuation” resulting in a US application with essentially identical rights as a national stage application.
Prioritized examination is expected to be quite popular. Indeed, the USPTO received over 2,000 requests for Prioritized Examination in the first four months of availability. To avoid overburdening the USPTO with such requests, the AIA permits the USPTO to limit Prioritized Examination to a maximum of 10,000 applications per year, although this limit is subject to increase by USPTO regulation.
The USPTO has announced plans to add over 1,500 new patent examiners. If successful, this may provide the necessary resources to increase the likelihood that the USPTO will raise the 10,000 application limit for Prioritized Examination. The new hires may also ease the backlog for normal examination and thereby reduce the need for Prioritized Examination.
The America Invents Act was enacted on September 16, 2011. Foley & Lardner LLP plans further articles on this important legislation.
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