USPTO's Prioritized Patent Examination Program FAQs

Question PE1:  What is prioritized examination?

Prioritized examination is a procedure for expedited review of a patent application for an additional fee.  The Office’s goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.

Question PE2:  Who can I contact if I have questions about a decision dismissing my request for prioritized examination or about how to file a request for prioritized examination via EFS-Web?

Contact the person who signed the decision dismissing the request if there is a question about the dismissal.  In addition, each Technology Center (TC) will have a few representatives who can be contacted about a specific decision dismissing a request for prioritized examination.  Questions related to the filing of a request for prioritized examination via EFS-Web can be directed to the Patent Electronic Business Center at 866-217-9197 or ebc@uspto.gov.  General questions about the prioritized examination program can be directed to the Office of Patent Legal Administration at (571) 272-7704 or patent.practice@uspto.gov.

Question PE3:  Is applicant required to use the Office’s certification and request form PTO/SB/424?

It is strongly recommended that applicants use the Office’s certification and request form PTO/SB/424 to request prioritized examination, but the form is not required.  The form 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/SB/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 Office’s form.

Question PE4:  How will I know if the limit of 10,000 granted requests for prioritized examination for the fiscal year has been reached?

The Office posts statistics, including the number of granted prioritized examination requests, on its Web site at http://www.uspto.gov/aia_implementation/patents.jsp.  In addition, the Office 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 Office will turn off the ability to file a request for prioritized examination in EFS-Web.  

Question PE 5:  The prioritized examination fee set forth in 37 CFR 1.17(c) is $4,800 for a non-small entity and $2,400 for a small entity.  Is there a micro entity fee available for the prioritized examination fee under 37 CFR 1.17(c)?

No. This final rule implements the fee for prioritized examination as set forth in section 11(h) of the Leahy-Smith America Invents Act, and is not an exercise of the Office’s fee-setting authority under section 10 of the Leahy-Smith America Invents Act such that a micro entity fee would apply.

Question PE6:  My application has been granted special status under the prioritized examination (Track I) 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 subsequently 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 PE7:  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 Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted.

Question PE8:  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 Office in not granting the request before filing such a petition under 37 CFR 1.181.

Question PE9:  May I file a petition for extension of time to extend the time period for filing a reply to an Office action?

While such a request will be acted upon as per MPEP 710.02, if applicant files 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 PE10:  What types of applications are eligible for prioritized examination?

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 I). See FAQs labeled PE-TI 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 request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for prioritized examination.  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 PE11:  Is there any statement on the front page of an issued patent to indicate that it was processed via prioritized examination?

No, there is no indication on the face of an issued patent that it was processed via prioritized examination.

Prioritized Examination Track I (for original application filings)

Question PE-TI1:  What is the effective date of prioritized examination (Track I)?

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

Question PE-TI2:  What types of applications are eligible for prioritized examination (Track I)?  How may I file a request for prioritized examination?  

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 I).  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-TI3:  What fees are required upon filing a request for prioritized examination (Track I)?  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).
v.  Track I processing fee, as set forth in 37 CFR 1.17(i).
vi.  Track I prioritized examination fee of $4800.00 ($2400.00 for small entities).
vii.  If applicable, any application size fee, due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).
viii. If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h).
ix.  If applicable, any excess claim fee, due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i).

If any fee is 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 additional required fees has been provided in the papers accompanying the application and 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-TI4:  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 I)?

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 I) of a national stage application (submitted under 35 U.S.C. 371) of an international application.

Question PE-TI5:  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 I)?

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-TI6:  I am filing an application, but one of the joint inventors has refused to execute an oath or declaration.  I have prepared a petition under 37 CFR 1.47 to permit the application to be made by the other inventor(s).  Can I request prioritized examination (Track I) for this application?

Yes; however, the petition under 37 CFR 1.47 must be filed with the filing of the application.  Prioritized examination status will not be granted if the petition under 37 CFR 1.47 is dismissed for any reason.  Applicants should consult MPEP 409.03- 409.03(g) for guidance regarding petitions under 37 CFR 1.47 to ensure that a grantable petition under 37 CFR 1.47 is filed with the application.  37 CFR 1.102(e) requires that the application must be complete upon filing as defined by 37 CFR 1.51(b), which requires an oath or declaration having the attributes set forth in 37 CFR 1.63 and 37 CFR 1.68.

Question PE-TI7:  Can I file an application under 35 U.S.C. 111(a) with a nonpublication request and a request for prioritized examination (Track I)?

Yes.  However, the $300 publication fee set forth in 37 CFR 1.18(d) must still be submitted with the request for prioritized examination (along with the other required fees), even though nonpublication is being requested.

Question PE-TI8:  I just filed my utility application and the form for the request for prioritized examination (Track I) 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 oath or declaration or the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the oath or declaration or 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-TI9:  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 I) 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 be complete as set forth in 37 CFR 1.51(b).  Thus, the application must include a specification as prescribed by 35 U.S.C. 112 including claim(s), any required drawings, an executed oath or declaration under 37 CFR 1.63, and the required fees.  If the application is not complete on filing as set forth in 37 CFR 1.51(b), then the request will 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) 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, as noted above.  However, the request for prioritized examination may still be granted if the application is complete as set forth in 37 CFR 1.51(b).

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 I) 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-TI10:  May I file a request for prioritized examination (Track I) in a continuing application?  

In order for a request for prioritized examination to be grantable, the application must be an original utility or plant application.  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-TI11:  If I file a preliminary amendment in an application that includes a request for prioritized examination (Track I), 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?  

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-TI12:  I understand that the publication fee as set forth in 37 CFR 1.18(d) must be paid when filing a request for prioritized examination.  May I submit a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i)?  If I submit a nonpublication request, must I still pay the publication fee?  May I request a refund of the publication fee if I submit a nonpublication request?  

You may submit a nonpublication request for an application even if prioritized examination is requested.  However, the publication fee still must be paid.  You 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-TI13: 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-TI14:  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-TI15:  My request for prioritized examination (Track I) was dismissed.  What fees can be refunded?

Only the Track I 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 I 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).  

Prioritized Examination for a Request for Continued Examination (RCE)

Question PE-RCE1:  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-RCE2:  For what type of applications, and in which circumstances, may I file Prioritized Examination (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 request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for Prioritized Examination.  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-RCE3:  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-RCE4:   How do I file a request for prioritized examination?  

The request for prioritized examination may be filed using form PTO/SB/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/SB/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 Office’s form.

Question PE-RCE5:  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 publication fee, as set forth in 37 CFR 1.18(d).
ii.  Prioritized examination processing fee, as set forth in 37 CFR 1.17(i).
iii.  Prioritized examination fee of $4800.00 ($2400.00 for small 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-RCE6:  When filing a request for prioritized examination for continued examination in an application that is national stage entry under 35 U.S.C. 371, how do I identify the proper fees in EFS-Web?  

EFS-Web currently does not provide an entry for the prioritized examination fee in its “Calculate Fees” Tab for applications which are national stage entries.  When filing a request for prioritized examination for continued examination, applicants should use the “Calculate Fees” Tab to select the processing fee (listed under “Miscellaneous Patent Fees” as #1808).  The “Calculate Fees” Tab should also be used to select the publication fee (listed under “Post Allowance and Post Issuance Fees” as #1504) and the RCE fee (listed under “Miscellaneous Patent Fees” as #1801) if these have not been previously paid.  The fee for prioritized examination should be paid using form PTO/SB/17 and entering “Prioritized Examination Fee” and the proper fee amount in the “Other” line under section 4, “Other Fee(s)”.  Form PTO/SB/17 should then be included in the EFS-Web filing through the “Attach Documents” tab.

Thus, applicants will attach forms PTO/SB/424 and PTO/SB/17, as well as any forms or documents incident to the request for continued examination (if not previously filed), using the “Attach Documents” tab.  Applicants will use the “Calculate Fees” tab to identify fees such as the processing fee, RCE fee (if not previously paid), and publication fee (if not previously paid).  Note that this procedure only applies to applications that are national stage entries, for which prioritized examination for a request for continued examination is being sought.

Question PE-RCE7:  Is prioritized examination now available for applications that were filed as a national stage entry under 35 U.S.C. 371?  

Upon filing a request for continued examination, prioritized examination becomes available for an application filed as a national stage entry under 35 U.S.C. 371.  Track I prioritized examination is still available only to a U.S. application under 35 U.S.C. 111(a) meeting the requirements of the program.

Question PE-RCE8:  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 I and prioritized examination for RCE requests.  

Question PE-RCE9:  My application has previously been granted special status under the prioritized examination (Track I) 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-RCE10:  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-RCE11:  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 Office 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-RCE12:  My request for prioritized examination (RCE) was dismissed.  What fees can be refunded?

Only the Track I 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 I processing fee, set forth in 37 CFR 1.17(i), 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).