March 1, 2012

Prioritized Examination Program at the USPTO

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

Effective as of 19 December 2011, patent applicants may request, for a fee, prioritized examination of their patent application. The prioritized examination is aimed to bring to final disposition of the application (namely, issuance of notice of allowance, final rejection, filing of notice of appeal, filing an RCE1 application or abandonment of the application) within a period of 12 months.

A prioritized examination program in the USPTO2 (also named Track One Prioritized Patent Examination Program) provided under the America Invents Act (AIA)3, became effective as of 19 December 2011. Under this program patent applicants may request, subject to payments of a fee, that the examination of their patent application will be expedited. This program aims to bring to final disposition of the application within a period of 12 months from filing of the request. This is a considerable acceleration (of close to 2 years!) as currently, according to USPTO statistics, the average time from filing of a patent application until final disposition is about 34 months. Recent USPTO statistics also showed that for applications under this program a first Office Action is issued after an average of 30.7 days from approval of the petition for prioritized examination.

A request for prioritized examination of an application has to be submitted concurrently with the filing of a new application. An alternative route, in case the application was already filed, is to submit RCE application and submit the request for prioritized examination within the framework of the RCE application (either at the time of filing or at any time thereafter before the issuance of a first Action). It is to be noted that once prioritized examination is granted, no extensions of term are permitted: if a timely response to an office action is not filed and the applicant has to avail itself to an extension, prioritized examination status will be terminated. 

Eligible patent applications include utility applications (including continuation, RCE, divisional and continuation in-part applications), which must be electronically filed. To meet eligibility requirements, the application must contain no more than a total of 30 claims, of which 4 may be independent claims.4

The fee for prioritized examination is currently set at US$4,800 for a large entity and at US$2,400 for a small entity. In addition, at the time of filing a prioritized examination request, a publication fee of US$300 will have to be paid. Additional costs are involved in case where the application has already been filed and a request for RCE application is needed.

Under the AIA, a limit is put on the total number of prioritized examinations at a maximum of 10,000 applications per fiscal year. The granting of prioritized examination status is on a first come, first served basis. Up to now several 1,000s of requests for prioritized examination have been submitted since 19 December 2011, which leaves the door currently open for more such requests.

Prioritized examination is an option to consider for important patent cases.



Request for Continued Examination
2 US Patent and Trademarks Office
The AIA was signed into law on 16 September 2011 and is the most significant and far-reaching change in the US Patent Law, in almost 50 years (see our newsletter entitled “Significant and Far Reaching Changes in US Patent Law” of September 2011, under this link).
An application containing more than the maximally permitted number of claims may be amended when submitting request for prioritized examination to reduce their number so as to comply with the requirements. If at any time during examination, as an outcome of amendment, the total number of claims exceeds the set maximum, the prioritized examination status will be terminated.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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