One provision of the newly enacted patent reform law, the Leahy-Smith America Invents Act, provides a prioritized examination process for a limited number of patent applications. The prioritized examination process will begin on September 26, 2011 and initially limits to 10,000 the number of patent applications that can be included in the first year of the prioritized examination process.
While little is known about the process that the U.S. Patent Office will implement in response to the change in the law1, the prioritized examination process likely will be similar to the “Track I” program announced earlier this year and then postponed in April. Prioritized examination is open to all technologies and to all newly-filed utility patent applications, including continuation applications. Prioritized examination is not open to international, design, reissue or provisional patent applications.
Patent applicants that use the program can expect their applications to be examined on a priority basis—often years ahead of schedule. In particular, a final disposition (e.g., notice of allowance or final rejection) is expected to take less than twelve months under prioritized examination, compared with three or more years under normal examination.
Given the similarities to the Track I program, we believe that the requirements for prioritized examination will be similar to, if not the same as, those announced for the Track I program.2 In addition to a prioritized examination fee, the U.S. Patent Office likely will require that the application be complete upon filing. In other words, the patent application filing must include all application parts, including claims, as well as all patent application fees and a signed inventorship declaration. The patent application likely will need to be electronically transmitted. Upon filing, the patent application is limited to four independent claims and 30 total claims. During prosecution, prompt responses will be required to maintain prioritized examination status.
A significant advantage of prioritized examination over current expedited examination processes, such as the existing Accelerated Examination option, is the lack of a requirement for a document explaining how the invention differs from the prior art. Historically, the preparation of an explanation document for Accelerated Examination was very time-consuming and expensive. Instead, the U.S. Patent Office will charge the prioritized examination fee of $4,800 (or $2,400 for “small entities”) for prioritized examination, which is over and above the normal filing fees for patent applications, and it is anticipated that no such explanation document will be required.
Prioritized examination provides exciting opportunities for many clients. For companies seeking venture funding, an opportunity exists to obtain some scope of patent protection in a very short time frame. For companies concerned with recent product introductions by competitors, an opportunity exists for rapidly obtaining a focused scope of protection in a continuation application to address the competitive product introductions. Because of the limited number of prioritized examination applications allotted under the current law, if you are interested in filing a prioritized examination application, we recommend you contact us soon.
1 A Federal Register notice regarding proposed regulations for prioritized examination is expected to be published on Friday, September 23, 2011.2Sources for this summary: 76 Fed. Reg. 64:18399–18407; http://www.uspto.gov/aia_implementation/bills-112hr1249enr.pdf; http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf.; and http://www.uspto.gov/aia_implementation/faq.jsp#heading-9.
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