Prioritized Patent Examination Program

Patent Help - Prioritized Patent Examination Program - Basics

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.

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).

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.

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).

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

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.

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.

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.

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.

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.

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.

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.

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.

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.

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).

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.

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.

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).

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.

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

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."

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.

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.

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.

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.

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).

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.

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

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.

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

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.

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.

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.

The USPTO posts statistics, including the number of granted prioritized examination requests, on its Web site athttp://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.

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

A quick start guide that details the process for filing such requests via EFS-Web is available on the USPTO web site athttp://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.

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".