uspto.gov
Skip over navigation

USPTO's Prioritized Patent Examination Program FAQs

Prioritized Examination – General Issues

Question PE_1000:  What is prioritized examination?

Prioritized examination is a procedure for expedited review of a patent application for an additional fee.  The USPTO’s goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.  The rule applicable to prioritized examination is 37 C.F.R. § 1.102(e).  Prioritized examination of newly filed applications is also known as “Track One” or Track I”.

Question PE_1050:  What types of applications are eligible for prioritized examination?

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111(a), having no more than 4 independent claims, 30 total claims, and no multiple dependent claims, and filed on or after September 26, 2011, are eligible for prioritized examination (Track One). See FAQs labeled PE-Track One below for details.

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111, or having entered the national stage under 35 U.S.C. 371, in which a proper request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for prioritized examination.  A proper RCE can only be filed if prosecution in the application is closed (e.g., the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application).  See 37 CFR 1.114(b).  A request for prioritized examination must be made before an Office action responsive to the RCE has been mailed.  See FAQs labeled PE-RCE below for details.

Question PE_1100:  How will I know if the limit of 10,000 granted requests for prioritized examination for the fiscal year has been reached?

The USPTO posts statistics, including the number of granted prioritized examination requests, on its Web site at http://www.uspto.gov/patents/init_events/Track_One.jsp.  In addition, the USPTO will post a message in EFS-Web if/when the number of granted requests is close to the limit.  If the limit is reached, the USPTO will turn off the ability to file a request for prioritized examination in EFS-Web. 

Question PE_1150:  As of March 19, 2013, the prioritized examination fee set forth in 37 CFR 1.17(c) is $4,000 for a non-small entity and $2,000 for a small entity.  Is there a micro entity fee available for the prioritized examination fee under 37 CFR 1.17(c)?

Yes.  The prioritized examination fee for a micro entity is $1,000. 

Question PE_1200:  How do I file a Request for Prioritized Examination for utility applications via EFS-Web?

A quick start guide that details the process for filing such requests via EFS-Web is available on the USPTO web site at http://www.uspto.gov/patents/init_events/track-1-quickstart-guide.pdf. If you have any questions or concerns regarding filing in EFS-Web, please contact the Patent EBC Monday - Friday, from 6:00 a.m. to 12 Midnight Eastern Time, by email at ebc@uspto.gov, or by telephone at 866-217-9197.

Question PE_1250:  Is applicant required to use the USPTO’s certification and request form PTO/AIA/424?

It is strongly recommended that applicants use the USPTO’s certification and request form PTO/AIA/424 to request prioritized examination, but the form is not required.  The form is available on EFS-Web and on the USPTO’s Internet Web site at http://www.uspto.gov/forms/index.jsp.  Failure to use form PTO/AIA/424 could result in the USPTO not recognizing the request or delays in processing the request.  If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the USPTO’s form.

Question PE_1300:  My application has been granted special status under the prioritized examination (Track One) program.  Will the application remain in that special status until either issuance or abandonment of the application? 

The prioritized examination program grants special status until one of the following occurs:

i.     Applicant files a petition for extension of time to extend the time period for filing a reply.
ii.    Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.
iii.   Applicant files a request for continued examination (RCE).
iv.   Applicant files a notice of appeal.
v.    Applicant files a request for suspension of action.
vi.    A notice of allowance is mailed.
vii.   A final Office action is mailed.
viii.  The application is abandoned.
ix.    Examination is completed as defined in 37 CFR 41.102.

Question PE_1350:  My application has been granted special status under the prioritized examination program.  When can I expect the final disposition of the application?

The goal of the USPTO is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. 

Question PE_1400:  I received a decision dismissing my request for prioritized examination.  Can I file a petition if I think the decision is not proper?

Applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper.  Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the USPTO in not granting the request before filing such a petition under 37 CFR 1.181.

Question PE_1450:  May I file a petition for extension of time to extend the time period for filing a reply to an Office action?

While a petition for extension of time will be acted upon as per MPEP 710.02, if applicant files such a petition for an extension of time to file a reply or a request for a suspension of action, the prioritized examination of the application will be terminated.

Question PE_1500:  How does an examiner conduct a search in an application subject to prioritized examination so that he/she does not miss prior art hidden in slower track applications?

If an examiner is aware that a currently unpublished application, upon publication or issue, would be available as prior art in an application under examination, the Office may suspend the application that is otherwise allowable until the said prior art reference becomes available.  Additionally, when an application subject to prioritized examination is allowed, the examiner conducts a search of unpublished applications for interference purposes.  See “Comment 15,” Proposed Rules, 76 FR 6369, 6374 (Feb. 04, 2011).

Question PE_1550:  Who can I contact if I have questions about a decision dismissing my Request for Prioritized Examination or the requirements for Prioritized Examination?

Contact the person who signed the decision dismissing the request if there is a question about the dismissal.  In addition, the Office of Petitions may be contacted about a specific decision dismissing a request for prioritized examination at 571-272-3282.  General questions about the prioritized examination program can be directed to the Office of Patent Legal Administration at (571) 272-7704 or at PatentPractice@uspto.gov.


Prioritized Examination for original application filings (Track One)

Question PE-Track One_2000:  What is the effective date of prioritized examination (Track One)?

The effective date of prioritized examination for new applications (Track One) is September 26, 2011.

Question PE-Track One_2050:  What types of applications are eligible for prioritized examination (Track One)?   May I file a request for prioritized examination (Track One) in a continuing application?

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111(a), having no more than 4 independent claims, 30 total claims, and no multiple dependent claims, and filed on or after September 26, 2011, are eligible for prioritized examination (Track One).  The term “original application” includes both first filings and continuing applications; see MPEP 201.04(a).  Thus, continuation, continuation-in-part, and divisional applications are eligible for prioritized examination, but reissue applications are not. 

Question PE-Track One_2100:  How may I file a Request for Prioritized Examination?

Requests for Prioritized Examination of utility patent applications must be filed using EFS-Web.  Requests for Prioritized Examination of plant patent applications must be filed in paper.  The Request for Prioritized Examination must be present on filing of the utility or plant application.

Question PE-Track One_2150:  What fees are required upon filing a Request for Prioritized Examination (Track One)?  What happens if one of the required fees is not present upon filing?

Consult the current fee schedule, available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp, for the correct fee amounts.  The fees required to be paid upon filing for Prioritized Examination are:

i.    Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c).
ii.    Search fee, as set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m).
iii.    Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).
iv.    Publication fee, as set forth in 37 CFR 1.18(d).  However, since this fee is currently set to $0, no publication fee is due at this time for a request for prioritized examination.  The prioritized examination rule still contains the publication fee as a requirement in the event that changes to the publication fee are made in the future.
v.    Track One processing fee, as set forth in 37 CFR 1.17(i)(1).
vi.    Track One prioritized examination fee of $4,000.00 ($2,000.00 for small entities, or $1,000.00 for micro entities).

If any of the above fees are unpaid at the time of filing of the application, the Request for Prioritized Examination will be dismissed.  However, if an explicit authorization to charge any of the missing fees has been provided in the papers accompanying the application and the request, those fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.  It is recommended that applicant include an authorization to charge any additional fees under 37 CFR §§ 1.16 and 1.17 to ensure that a Track One request is not dismissed for failure to pay the required fees.

Question PE-Track One_2200:  I have an international application pending.  Is there any way that I can file a U.S. application based on that international application and have the U.S. application be eligible for prioritized examination (Track One)?

Yes.  An applicant may file a U.S. application under 35 U.S.C. 111(a), and in that application, claim the benefit of the earlier international application under 35 U.S.C. 365(c), or claim the right of priority of the earlier international application under 35 U.S.C. 365(a), subject to the conditions of 35 U.S.C. 365.  Such an application is eligible for prioritized examination.  However, an applicant may not request prioritized examination (Track One) of a national stage application (submitted under 35 U.S.C. 371) of an international application.

Question PE-Track One_2250:  I have a foreign application pending.  Is there any way that I can file a U.S. application that claims priority to the foreign application under 35 U.S.C. 119(a)-(d) or (f), and have the U.S. application be eligible for prioritized examination (Track One)?

Yes.  Any original utility or plant nonprovisional application filed under 35 U.S.C. 111(a) and claiming priority to a foreign application under 35 U.S.C. 119(a)-(d) or (f) is eligible for prioritized examination.

Question PE-Track One_2300:  I am filing an application, but one of the joint inventors has refused to execute an oath or declaration.  I have prepared a substitute statement for that joint inventor.  Can I request prioritized examination (Track One) for this application?

Yes; however, either (1) the substitute statement and the declaration(s) from the other joint inventor(s) or (2) a signed ADS that provides each inventor’s legal name, mailing address, and residence (if the inventor does not reside at the mailing address), must be submitted on the date the application is filed.  If the signed ADS is not present upon filing, or the substitute statement is defective for any reason, prioritized examination status will not be granted.  For guidance in filing a substitute statement, see Examples 2 and 4 in "Inventor’s Oath or Declaration Examples Featuring 'Best Practices' in Use of Inventor’s Oath or Declaration Forms."

Question PE-Track One_2350:  If an applicant plans to file a continuation application with a request for prioritized examination, can the applicant submit a copy of the inventor's declaration from the parent application?

Yes, a copy of the inventor’s oath or declaration from a parent application may be submitted for a continuing application, provided that the inventor’s oath or declaration of the earlier-filed application is compliant with current rules for the inventor’s oath or declaration.  See 37 CFR 1.63(d).

Question PE-Track One_2400:  Can I file an application under 35 U.S.C. 111(a) with a nonpublication request and a request for prioritized examination (Track One)?

Yes.  Although the publication fee set forth in 37 CFR 1.18(d) is required by the rule, this fee currently is $0, so no fee is due.  However, if the fee is set to a different amount in the future, that fee amount must be submitted with the request for prioritized examination (along with the other required fees), even though nonpublication is being requested.

Question PE-Track One_2450: I filed a U.S. application under 35 U.S.C. 111(a) and claimed the benefit of an earlier international application under 35 U.S.C. 365(c) (a by-pass continuation).  Is it necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application? 

No.  However, a translation is required in accordance with 37 CFR 1.52(b)(1). 

Question PE-Track One_2500:  May I file an application with color drawings by EFS-Web, and is a petition necessary?

Yes, color drawings may be filed with new applications through EFS-Web.  As stated at MPEP 502.05(VIII):

“color drawings . . . may be submitted via EFS-Web in only the following types of applications and proceedings: . . . (3)  Nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications; (4) U.S. national stage applications under 35 U.S.C. 371.”

See MPEP 502.05 for filing instructions. See also the EFS-Web legal framework at 74 Fed. Reg. 55200.

Yes, a petition is still required for entry of color drawings; see MPEP 608.02(VIII).

Question PE-Track One_2550:  I just filed my utility application and the form for the request for prioritized examination (Track One) through EFS-Web, but I inadvertently omitted an item.  Can I supplement my original EFS-Web filing with a follow-on submission that supplies the missing item?

Yes, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed.  For example, if the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application.  Applicants are also reminded that only registered users of EFS-Web can submit follow-on documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application.  Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed.  See also MPEP 502.05, III, D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.

Question PE-Track One_2600:  I received a pre-examination notice from the Office of Patent Application Processing that identifies missing items or informalities in my original application filing.  When will I receive a decision on my request for prioritized examination?  Will my request for prioritized examination (Track One) be dismissed?  Can I file an extension of time to respond to the notice? 

Requests for prioritized examination will be acted upon once the application has met all formal requirements such that it is ready for examination.  A description of what it means for an application to be in condition for examination is provided at MPEP 708.02, subsection VIII.C.  Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice.  

A proper request for prioritized examination requires that the application include a specification as prescribed by 35 U.S.C. 112 including claim(s), any required drawings.  The application must also include either an executed inventor’s oath or declaration under 37 CFR 1.63 or 1.64 for each inventor, or a signed ADS that provides the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor.  The application must also include the filing, search, and examination fees, and the prioritized examination fee and the processing fee.  Failure to submit these required items on the date of filing will cause the request to be dismissed. 

Applicants may, however, receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52, or an English-language specification, or a notice requiring an excess claims fee) that results in the application not being in condition for examination.  These other informalities or deficiencies in the application will delay a decision on the request for prioritized examination, but will not cause the request to be dismissed.

Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination (Track One) program.  A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.

Question PE-Track One_2650:  If I file a preliminary amendment in an application for which a request for prioritized examination (Track One) was previously filed, will that cause the pending request to be dismissed?  Will it cause termination of the special status under prioritized examination if the request has already been granted? 

A preliminary amendment filed in an application that includes a request for prioritized examination will not result in dismissal of a pending request, or termination of special status if a request has already been granted, so long as the preliminary amendment does not cause the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.   

Question PE-Track One_2700:  If I file an information disclosure statement (IDS) in an application that includes a request for prioritized examination (Track One), will that cause a pending request to be dismissed?  Will it cause termination of the special status under prioritized examination if the request has already been granted? 

An information disclosure statement (IDS) filed in an application that includes a request for prioritized examination will not result in dismissal of a pending request, or termination of special status if a request has already been granted.

Question PE-Track One_2750:  My request for prioritized examination (Track One) was dismissed.  What fees can be refunded?

Only the Track One prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination.  This fee will be refunded automatically (if paid) without the need for applicant to request such a refund.  The Track One processing fee, set forth in 37 CFR 1.17(i), will be retained to cover the cost of processing the request.  In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded.  Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d).  Furthermore, applicant may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b). 

Question PE-Track One_2800:  The USPTO issued a rulemaking on March 5, 2014 modifying the requirements for prioritized examination, “Changes to Permit Delayed Submission of Certain Requirements for Prioritized Examination Interim Rule,” (79 Fed. Reg. 12386, March 5, 2014).  How have the requirements changed due to that rulemaking?

If a signed ADS that provides the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor is present on filing, the inventor’s oath or declaration need not be submitted on filing.

The application size fee or an excess claims fee is not required to be present on filing; however, if required, these fees should be paid on filing to avoid any delays in the processing of the Track One request.

An application for which prioritized examination is sought may not contain more than four independent claims, more than thirty total claims, or any multiple dependent claims.  If applicant has mistakenly failed to comply with those requirements, applicant will receive a decision on the request for prioritized examination that provides one month to take corrective action.  That one month period is not extendable. 

Question PE-Track One_2850:  The USPTO issued a rulemaking on March 5, 2014 modifying the requirements for prioritized examination.  My Track One request was dismissed before March 5, 2014, but it would have complied with the requirements as modified by the March 5, 2014 rulemaking.  May I request reconsideration? 

These changes are retroactive to any pending application in which a request for prioritized examination was filed on or after September 16, 2012, a first Office action has not been made, and no extension of time has been sought.  In such situations, an applicant may file a request for reconsideration of the dismissal of the previous Track One request.  Applicant should include any Track One fees due, or include an authorization to charge any Track One fees due to an existing deposit account, with the request for reconsideration.


Prioritized Examination for a Request for Continued Examination (RCE)

Question PE-RCE_3000:  What is the effective date of prioritized examination for RCE filings?

The effective date of the program for prioritized examination for requests for continued examination is December 19, 2011.

Question PE-RCE_3050:  For what type of applications, and in which circumstances, may I request  prioritized examination when filing an RCE? 

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111, or having entered the national stage under 35 U.S.C. 371, in which a proper request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for prioritized examination.  A proper RCE can only be filed if prosecution in the application is closed (e.g., the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application).  See 37 CFR 1.114(b). A Request for Prioritized Examination must be made before an Office action responsive to the RCE has been mailed.  The application must contain, or be amended to contain, no more than 4 independent claims, 30 total claims, and no multiple dependent claims.  Requests for Prioritized Examination of utility patent applications must be filed using EFS-Web.  Requests for Prioritized Examination of plant patent applications must be filed in paper. 

Question PE-RCE_3100:  When may I file a Request for Prioritized Examination in a case in which a request for continued examination has been or will be filed?

The Request for Prioritized Examination must be filed prior to the mailing of a first Office action after the filing of a request for continued examination, and either be filed concurrently with, or subsequently to, the filing of a request for continued examination.

Question PE-RCE_3150:   How do I file a Request for Prioritized Examination?  

The request for prioritized examination may be filed using form PTO/AIA/424, which is available on EFS-Web and on the Office’s Internet Web site at http://www.uspto.gov/forms/index.jsp.  Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request.  If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the USPTO’s form.

Question PE-RCE_3200:  What fees are required upon filing a Request for Prioritized Examination in a request for continued examination (RCE)?  What happens if one of the required fees is not present upon filing?

Consult the current fee schedule available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp for the correct fee amounts.  The fees required to be paid upon filing for Prioritized Examination for requests for continued examination are:

i.    If not previously paid, the applicable publication fee as set forth in 37 CFR 1.18(d). However, since this fee is currently set to $0, no publication fee is due at this time for a request for prioritized examination for continued examination (RCE).  The prioritized examination rule still contains the publication fee as a requirement in the event that changes to the publication fee are made in the future.
ii.    Prioritized examination processing fee, as set forth in 37 CFR 1.17(i)(1).
iii.    Prioritized examination fee set forth in 37 CFR 1.17(c) ($4000.00, or $2000.00 for small entities, or $1000.00 for micro entities).

If any fee is unpaid at the time of filing of the request for prioritized examination, the request for prioritized examination will be dismissed.  However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

Question PE-RCE_3250:  Is prioritized examination now available for applications that were filed as a national stage entry under 35 U.S.C. 371? 

Upon filing a proper request for continued examination (which requires prosecution in the application to be closed), prioritized examination becomes available for an application filed as a national stage entry under 35 U.S.C. 371. 

Question PE-RCE_3300:  Is there a separate limit of 10,000 granted requests for prioritized examination for the fiscal year for RCE filings?

No, the 10,000 limit applies to the sum of all granted requests for prioritized examination, including both Track One and prioritized examination for RCE requests. 

Question PE-RCE_3350:  My application has previously been granted special status under the prioritized examination (Track One) program.  I am now filing an RCE for that application.  May I file a request for prioritized examination with that RCE filing? 

Yes.  The prioritized examination program permits a single request to be granted upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted upon filing a request for continued examination under 37 CFR 1.114.

Question PE-RCE_3400:  My application has previously been granted special status under the prioritized examination (RCE) program.  I am now filing a second RCE for that application.  May I file a request for prioritized examination with that second RCE filing? 

No.  The prioritized examination program permits only a single request to be granted associated with a request for continued examination under 37 C.F.R. 1.114 in that application.

Question PE-RCE_3450:  I received a decision dismissing my request for prioritized examination for a request for continued examination.  May I file a petition if I think the decision is not proper?  May I file a second request for prioritized examination?

Applicant may file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper.  Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the USPTO in not granting the request before filing such a petition under 37 CFR 1.181.

Alternately, applicant may file a new request for prioritized examination for that same request for continued examination.  The new request must include the proper fees and be timely; i.e., be filed prior to the mailing of a first Office action after the filing of the request for continued examination. 

 Question PE-RCE3500:  My request for prioritized examination was dismissed.  What fees can be refunded?

Only the Track One prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination.  This fee will be refunded automatically (if paid) without the need for applicant to request such a refund.  The Track One processing fee, set forth in 37 CFR 1.17(i)(1), will be retained to cover the cost of processing the request.  Applicant may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b). 


Other

Question PE 5000:  What is the role of Patent Prosecution Highway (PPH) under the AIA? 

There are no changes to PPH under the AIA.  For more detailed information about the PPH program, the Office has created a specialized micro-site at http://www.uspto.gov/patents/init_events/pph/index.jsp 

United States Patent and Trademark Office
This page is owned by Patents.
Last Modified: 6/2/2014 10:29:22 AM