Prioritized Exam Overview
Objectives to know about Prioritized Exam specific to the AIA
- Understand the AIA’s creation of Prioritized Exam
- Identify the key laws and rules (37 CFR and 35 USC) pertaining to Prioritized Exam specific to the AIA
- Apply the laws and rules pertaining to Prioritized Exam specific to the AIA to real-world scenarios
Key Laws and Rules (37 CFR and 35 USC) pertaining to Prioritized Exam specific to the AIA
- 35 U.S.C. § 102(e): Prioritized examination
- 37 CFR § 1.102(e): Prioritized examination
Comprehensive, detailed, e-learning module content for Prioritized Exam specific to the AIA
Module 1: Introduction to Prioritized Exam
This module will introduce Prioritized Exam. It will discuss the purpose of Prioritized Exam, the benefits of Prioritized Exam, and the requirements for requesting Prioritized Exam.
Purpose of Prioritized Exam
The purpose of Prioritized Exam is to expedite the examination of patent applications for an additional fee. The USPTO’s goal for Prioritized Exam is to provide a final disposition within twelve months of Prioritized status being granted.
Benefits of Prioritized Exam
The benefits of Prioritized Exam include:
- Reduced patent prosecution time
- Increased likelihood of obtaining a patent
- Reduced patent prosecution costs
Requirements for requesting Prioritized Exam
To request Prioritized Exam, an applicant must:
- File a certification and request form with the USPTO
- Pay a prioritized examination fee
Module 2: Applying the laws and rules pertaining to Prioritized Exam specific to the AIA to real-world scenarios
This module will discuss how to apply the laws and rules pertaining to Prioritized Exam specific to the AIA to real-world scenarios. It will cover common issues that arise in connection with Prioritized Exam and how to address those issues.
Common issues
Some common issues that arise in connection with Prioritized Exam include:
- Whether the applicant meets the requirements for requesting Prioritized Exam
- How to file a certification and request form for Prioritized Exam
- How to pay the prioritized examination fee
- What to do if the USPTO denies a request for Prioritized Exam
Module 1: Introduction to Prioritized Exam
Objectives:
- Define Prioritized Exam and explain its purpose
- Identify the benefits of Prioritized Exam
- Describe the requirements for requesting Prioritized Exam
What is Prioritized Exam?
Prioritized Exam is a service offered by the United States Patent and Trademark Office (USPTO) that allows patent applicants to expedite the examination of their patent applications for an additional fee. The USPTO’s goal for Prioritized Exam is to provide a final disposition within twelve months of Prioritized status being granted.
Purpose of Prioritized Exam
The purpose of Prioritized Exam is to provide patent applicants with the ability to obtain a patent more quickly. This can be important for a number of reasons, such as:
- To get a product to market faster
- To deter competitors from copying the invention
- To raise capital from investors
Benefits of Prioritized Exam
The benefits of Prioritized Exam include:
- Reduced patent prosecution time
- Increased likelihood of obtaining a patent
- Reduced patent prosecution costs
Requirements for requesting Prioritized Exam
To request Prioritized Exam, an applicant must:
- File a certification and request form with the USPTO
- Pay a prioritized examination fee
Module 2: Applying the laws and rules pertaining to Prioritized Exam specific to the AIA
Objectives:
- Identify the key laws and rules (37 CFR and 35 USC) pertaining to Prioritized Exam specific to the AIA
- Apply the laws and rules pertaining to Prioritized Exam specific to the AIA to real-world scenarios
Key Laws and Rules (37 CFR and 35 USC) pertaining to Prioritized Exam specific to the AIA
- 35 U.S.C. § 102(e): Prioritized examination
- 37 CFR § 1.102(e): Prioritized examination
Applying the laws and rules pertaining to Prioritized Exam specific to the AIA to real-world scenarios
Here are some examples of how to apply the laws and rules pertaining to Prioritized Exam specific to the AIA to real-world scenarios:
Example 1:
A company is developing a new medical device that is patentable. The company wants to file a patent application and needs to obtain a patent quickly in order to launch the product on time. The company can request Prioritized Exam to expedite the examination of the patent application.
Example 2:
A small business has filed a patent application and is concerned about the cost of patent prosecution. The small business can request Prioritized Exam to take advantage of the reduced patent prosecution costs that are available to applicants who request Prioritized Exam.
Example 3:
An inventor has developed a new invention and wants to file a patent application. The inventor is on a limited budget and wants to take advantage of the reduced patent prosecution costs that are available to applicants who request Prioritized Exam. The inventor can request Prioritized Exam to expedite the examination of the patent application and to reduce the cost of patent prosecution.
In April 2011, the Office finalized rules providing for prioritized examination, but had to delay the effective date due to lack of funding. Section 11 of the America Invents Act expressly provided for the Office to institute prioritized examination (Track I).
Before the America Invents Act, the Office was working to develop a three track system for examining new patents. Track I was prioritized examination, which aimed to provide a final disposition on an application within twelve months of the granting of prioritized examination. Track II was the regular examination procedure. Track III, if requested by the applicant, would provide for the application examination to be delayed by as much as thirty months. In April 2011, the Office published final rules regarding prioritized examination, but had to delay the effective date because the lack of funding would have led to delays in the examination of non-prioritized applications.
Prioritized examination was adopted by the America Invents Act and can now be utilized by new utility or plant applications. Prioritized examination may also be granted in a request for continued examination (RCE) in a plant or utility application.
To obtain prioritized examination, an applicant must pay a fee of around $4,000 (small entity is 50%; micro entity is 25% – see 37 CFR 1.17(c)) in addition to the fee for regular examination. The application cannot contain more than four independent claims or thirty total claims with none of those claims being multiple dependent claims.
Once granted, the application is according special status and is placed in the examiner’s special docket, where it will remain throughout the entire course of pendency. Prioritized examination will be terminated, and the application will be entered into the regular application process (Track II), if the applicant files a petition for an extension of time, request for continued examination, request for suspension of action, notice of appeal, or amends the application to include more than four independent claims, more than thirty total claims, or any multiple dependent claims. No refund will be given if the applicant’s acts terminate prioritized examination.
This procedure does not replace accelerated examination, which will continue to be a tool for applicants who meet its special requirements. Also, the America Invents Act limits the number of applications that can be given prioritized examination to 10,000 per fiscal year. The Office has the authority to adjust this limit as it sees fit.
Key Dates Plant and utility applications (including continuing applications) filed under 35 USC 111(a) on or after September 26, 2011 are eligible for prioritized examination.