USPTO Patent Prioritized Examination

In 2010, the United States Patent and Trademark Office (USPTO) proposed the implementation of certain procedures designed to give patent applicants more control over the timing of the examination of original plant and utility patent applications. Specifically, the USPTO proposed a three-track system whereby applicants could request prioritized examination (Track I), request a delay in the docketing of an application (Track III) or obtain processing under the current examination procedure (Track II) by not requesting either Track I or Track III. The USPTO is still considering and revising the Track III delayed procedure. However, the USPTO intends to implement the Track I procedures immediately.

Accordingly, on or after May 4, 2011, a request for prioritized examination may be submitted with any original utility or plant application. A patent application may be granted prioritized examination status upon satisfaction of the following conditions:

1. The application must be a new original utility or plant non-provisional application. The procedure does not apply to international applications, design applications, reissue applications, provisional applications and re-examination applications. Prioritized examination of continuing applications (i.e., a continuation or a divisional application) may be requested, provided that each individual continuing application for which the request is made meets the requirements.
2. The application must be complete including the payment of all applicable fees (basic filing fee, the search fee, the examination fee, any excess claims fees and any application size fee). If it is a utility application, it must be filed via the USPTO's electronic filing system.
3. The application must contain no more than four independent claims and no more than thirty total claims. The application cannot contain multiple dependent claims.
4. The application must be accompanied by the prioritized examination fee, the processing fee and the publication fee. The prioritized examination fee has been set at $4000 for all entity sizes. Legislative approval is being sought to eventually halve that fee for small entities.
5. The request will only be accepted if the number of requests for the given year has not exceeded the maximum permitted amount. The USPTO has set the maximum number at 10,000 applications for 2011.

The USPTO advises that a prioritized application will be accorded special status and will be placed on the examiner's special docket throughout the course of its prosecution. The goal of the USPTO is to reach a final acceptance or rejection of a prioritized application within 12 months of prioritized status being granted.

If you have any questions about the prioritized, Track I application process or about the application process in general, please contact a Bennett Jones patent agent.