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8.4 “Prioritized Examination” – America Invents Act

Prioritized Examination America Invents Act Patent Law

Prioritized Examination America Invents Act Patent Law


A new prioritized examination is allowed by the America invents act through section 11 (Track 1).  Prioritized examination provides for the final deposition on applications within 12 months of the granting of prioritized examination.  This is available for utility and plant patents and also for a request for continued examination in a plant or utility patent.  The prioritized exam does not replace accelerated examinations (if applicant meet special requirements).  Only 10,000 prioritized examination’s are allowed per year which is the sum of regular and RCE prioritized examinations.

Requesting and filing for prioritized examination:

RCE request for prioritized examination must be made before the first office action on the RCE.  This prioritized examination request must be concurrent or subsequent to the RCE request.  This can be amended to meet the claim limitations below.  It must be filed through EFS-Web for utility RCEs and through paper submission (mailing or in-person) for plant RCEs.

For international applications, a patent owner may achieve prioritized examination if they have done or amend to: claim benefit under 35 U.S.C. § 365(c); claim right of priority under 35 U.S.C. § (a); claim priority under 35 U.S.C. § 119(a)-(d) and (f).  However, this can not happen for 35 U.S.C. § 371 national stage applications.

Only one request for prioritized examination allowed (if dismissed cannot re-request).

Refusal of one joint inventor to execute Oath/Declaration can be remedied by petition filed with the application.  If the petition is dismissed for any reason the prioritized status is removed.

 There is an extra fee of $4,800 (50% off for small entity) for the prioritized examination.  A non-publication request of a prioritized examination can be requested, however the publication fee will still need to be submitted.  If the applicant inadvertently omits required any information on initial filing the supplemental information can be added only on the same day as the initial filing via EFS-Web.  Remember, only registered users allowed to file via EFS-Web.

All formal requirements must be met before prioritized examination will be acted upon.  This includes the submission of the specification, required drawings (if any), executed oath or declaration and the fees.

Pre-examination notice will delay the prioritized examination until the applicant has filed a complete (and timely) reply to any notice.  The application cannot contain more than 4 independent claims, 30 total claims and can not have a single multiple dependent claim.

Color drawings are allowed in EFS-Web submitted new applications for Non-provisional utility applications (includes reissue utility applications) and 35 U.S.C. 371 national stage applications.  However, a petition still needed for color drawing approval.

Preliminary amendments can be added after request for prioritized examination if the amendment does not exceed the before mentioned claim limitations.

Prioritized examination stopped if:

 The prioritized examination will be stopped if the applicant or practitioner: files a petition for extension of time; files a request for continued examination; files a request for a suspension of action; files a notice of appeal; or introduces an amendment to the application which adds more than four independent claims, more than 30 total claims or a multiple dependent claim.  There are no refunds granted if prioritized examination stopped.  A petition can be filed if they believe the prioritized examination was stopped for improper reasons.

Fees for filing a prioritized examination:

The fees for a prioritized examination include: basic filing fee, search fee, examination fee, publication fee, Track 1 processing fee, Track 1 prioritized examination fee, size fee (if applicable) and any excess claims fee (if applicable).  Fees for RCE prioritized examination include: publication fee, prioritized examination processing fee and the prioritized examination fee.

If a required fee is unpaid at the time of filing this will result in prioritized examination being dismissed.  The explicit authorization to charge fees from a deposit account can help safeguard against this.

Fee for prioritized examination will be refunded if dismissal of the prioritized examination is requested.  This can include search and excess claims fee can be refunded via petition with express abandonment and publication fee (if not published pursuant to 35 U.S.C. 122(b)).  All other fees are non-refundable.

Key dates

September 26, 2011

  • Effective date for prioritized examination on plant or utility patents

December 19, 2011

  • Effective date for request for continued examination’s

Key concepts

  • Track one is 12 months
  • Allowed on the utility, plant and request for continued examination
  • Can be used on patents claiming benefit to international applications
  • $4,800 fee
    • 50% off small entity
  • Full application needs to be successfully submitted for prioritized examination
    • Specification
    • Executed Oath/Declaration
    • Required drawings
    • Fees
  • Pre-examination notice can delay prioritized examination
  • Four independent claims, 30 total claims, no multiple dependent claims
  • Stopped if applicant files item which will extend the prosecution of patent
  • Only one request for prioritized examination allowed
    • No additional allowed if stopped
  • No refund granted if stopped
  • 10,000 allowed per year

Rules and Laws

37 C.F.R. 1.17(c)

  • Prioritized Examination Fee

37 C.F.R. 1.181

  • Petition

MPEP 1126

  • Refund of publication fee

MPEP 502.05

  • Filing instructions