USPTO READY TO IMPLEMENT PRIORITIZED EXAMINATION

On April 4, 2010, the United States Patent and Trademark Office (USPTO) published in the Federal Register a final rule to implement the prioritized examination that guarantees a final disposition of a patent application within one year from filing. Under the new system, utility and plant applications filed to USPTO will be examined classified as one of the following three Tracks:

Track I: prioritized examination;
Track II: traditional examination under the current procedures; and
Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.

Qualifications of an application to be classified in Track I are as follows.
1. The application must be a utility or a plant application.
2. The application contains four or less independent claims, and thirty or less total claims.
3. The application must be filed electronically.
4. It is required to make a payment of $4,000 as a special fee ($5,520 filing fee in total).
5. An applicant files a petition for an extension of time to extend the time period for filing a reply, the prioritized examination of the application will be terminated.

Under Track I prioritized examination, an application would be accorded special status and placed on the examiner’s special docket throughout its entire course of prosecution before the examiner until a final disposition is reached in the application. The aggregate goal for handling applications under Track I prioritized examination would be to provide a final disposition within twelve months of prioritized status being granted. The final disposition for the twelve-month goal means: (1) mailing of a notice of allowance, (2) mailing of a final Office action, (3) filing of a notice of appeal, (4) declaration of an interference by the Board of Patent Appeals and Interferences (BPAI), (5) filing of a request for continued examination, or (6) abandonment of the application, within twelve months from the date prioritized status has been granted. An application in Track I, however, would not be afforded special status throughout its entire course of appeal or interference before the BPAI.

Application will be placed on Track III, if applicants request a delay in docketing the application for examination by filing a request for delay in payment of the search fee, the examination fee, the claims fees and the surcharge (if appropriate) for a maximum period not to exceed thirty months in an original utility or plant application filed under 35 U.S.C. 111(a). Also, Applicant can proceed with processing under the current examination procedure (i.e., Track II) by simply not requesting to participate in either Track I or Track III processing.

USPTO plans to hire additional examiners above the number of planned hires, based on the number of requests for Track I prioritization received by the Office, so that the non-prioritized applications would not be delayed due to resources being diverted to process the prioritized applications.

Reference: Federal Register /Vol. 76, No. 64 /Monday, April 4, 2011 /Rules and Regulations

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