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USPTO Issues Final Rule to Implement Prioritized Examination

On April 4, 2011, the United States Patent and Trademark Office (USPTO) issued a final rule regarding prioritized examination (Track I).  The purpose of the rule is to provide a final disposition within twelve months of prioritized status being granted. 

 Track I of the prioritized examination will allow an applicant to request prioritized examination of an original utility or plant application under 37 CFR 1.102(e).  To qualify for this status, the application: (1) must be a new original utility or plant nonprovisional application filed on or after May 4, 2011, (2) must be complete under 37 CFR 1.51(b) including an oath or declaration under 37 CFR 1.63 and all required fees (i.e., filing fee, search fee, examination fee, any excess claims fees, and any application size fee), and it must be filed via the USPTO’s electronic filing system (EFS-Web) if it is a utility application, (3) must contain no more than 4 independent claims, no more than 30 total claims, and cannot contain any multiple dependent claims, (4) and must be filed in conjunction with a request for prioritized examination in compliance with 37 CFR 1.102(e) along with the prioritized examination fee, the processing fee, and the publication fee.  The prioritized examination fee is the same for large and small entities ($4000), although this fee may be increased to $4,800 for large entities and reduced to $2,400 for small entities if the patent reform legislation S. 23 (or similar legislation) is enacted into law. 

Additional details from the Federal Register notice point out that continuing applications are acceptable; however, these applications will not automatically be given prioritized examination status based on a request filed in the parent case.  As well, unlike the accelerated examination program under 37 CFR 1.102(d), the filing of an examination support document is not required for prioritized examination under 37 CFR 1.102(e).

The USPTO is limiting the number of qualifying applications to 10,000 during the remainder of 2011. 

 To read the final rule in the Federal Register, click here.