Expedited Examination

April 13, 2011

On April 4, 2011, the United States Patent and Trademark Office announced rule changes that will permit prioritized examination (or fast-tracking) of utility patent and plant patent applications, which the Patent Office refers to as “Track One” examination.

On or after May 4, 2011, applicants may submit with their new application a request for prioritized examination. Such requests require payment of a Patent Office request fee of $4,000 (in addition to other application fees, such as filing, search, examination, extra claims, application size, processing and publication fees). Presently there is no discount of the request fee available for small entities requesting prioritized examination, but that is subject to change if the pending patent reform legislation is enacted. Through the end of Fiscal Year 2011 (which ends September 30, 2011), the Patent Office will only accept the first 10,000 requests for prioritized examination.

To qualify for prioritized examination under this new program, a patent application must be limited to four independent claims and 30 total claims, with no multiple dependent claims. If necessary to meet this requirement, a preliminary amendment may be submitted at the time of filing. If any extensions of time are requested during prosecution of the application, the application is amended to include claims in excess of the maximum four independent or 30 total claims, or the application becomes involved in an interference or appeal, prioritized examination would cease and the application would proceed at the pace of a regularly-filed application.

While prioritized examination is not available for the U.S. national phase of international (PCT) applications, applicants may instead file their new U.S. application as a continuation of the PCT application if they wish to participate in the prioritized examination program. However, the Patent Office will apply the US election/restriction standard to such continuation applications, which in practice can be more strict than the PCT lack-of-unity of invention standard applied to U.S. national phase applications.

Before deciding whether to request prioritized examination, applicants should consult a qualified patent practitioner.

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