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11.17.2011 | Legal Update

As discussed in our March issue, earlier this year the United States Patent and Trademark Office (PTO) published a proposed prioritized examination procedure to allow applicants to speed up patent application prosecution by meeting particular requirements, including paying an additional fee. However, the PTO later delayed the implementation of the “fast track” or Track I procedure because of funding limitations—the PTO could not hire the number of new examiners needed to meet “fast track” pendency goals without impacting the examination of non-prioritized applications. The delay is now over, as the Leahy-Smith America Invents Act (AIA) brought the “fast track” back as of September 26, 2011.

Prioritized examination (PE) provides a patent applicant the ability to receive expedited review of his or her original utility or plant application for an additional fee if the application is filed on or after September 26, 2011. The expedited review is aimed to result in a final disposition within twelve months of prioritization. Final disposition can include the mailing of a notice of allowance or a final office action, filing a notice of appeal or a Request for Continued Examination (RCE), or abandoning the application. Prioritization is lost after filing an RCE, or through the course of an appeal or interference.

Applicants receive prioritized status by filing a request (Form PTO\SB\424) with a $4800 fee, exclusive of typical filing and prosecution fees.  Small entities receive a 50% discount. It remains to be seen whether micro entities will receive a 75% discount, as the PTO has yet to set its fee schedules for micro entities. Applications subject to PE can have up to 4 independent claims and 30 total claims, and excess claim fees do still apply. If an applicant amends claims to exceed the claim limits, PE is terminated. Currently, the PTO is limiting prioritized applications to 10,000 per fiscal year, and for the uninitiated is providing a Quick Start Guide to help applicants figure out how to file their requests.

When an application enters Track I, it is accorded special status and placed on the examiner’s special docket throughout the course of prosecution until a final disposition is reached. The time periods for reply are the same as for standard, non-prioritized applications, unlike accelerated examination (AE). However, any petition for an extension of time to file a reply or request for suspension will automatically terminate the application’s prioritized status, and the application will revert to the standard prosecution track.

The PE procedure is not intended to replace the currently available AE procedure. Both options co-exist as alternatives. AE has a lower filing fee, limits applicants to 3 independent and 20 total claims, requires up-front search and analysis, and limits response time periods to one month. It is anticipated that most applicants will find PE more palatable than AE because under PE there is no requirement to create written prosecution history by performing and submitting an up-front search and analysis.

The PTO website provides statistics on PEs. As of November 4, 2011, for the 2011 fiscal year (which ended on September 30, 2011), 852 total prioritized applications were filed, 365 of which have been granted and 4 of which have been dismissed. For the 2012 fiscal year (which concludes on September 30, 2012), 377 prioritized applications have been filed, 26 of which have been granted and none of which have been dismissed. There does not appear to be a present danger of being locked out of PE during the 2012 fiscal year due to the 10,000 application limit.

As the PE procedure has only just begun, it is difficult to predict whether the PTO will be able to meet its 12 month pendency goal. At its current rate, this goal appears achievable, but if applicants are adopting the “wait-and-see” approach, these early successes may result in an increase in prioritization requests and pendency times.

Applicants interested in expediting the prosecution of their applications should consult their patent attorneys about pursuing this option, particularly when attaining a patent within a year may provide real value for the applicants.

This advisory was prepared by Nutter’s Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.