News Item
Track I prioritized examination fees effective September 26, 2011; rules issued(9/28/11)
We have written here, here and here about how the United States Patent and Trademark Office (USPTO) decided that it would implement prioritized examination and here about how it canceled the implementation due to lack of funding. Prioritized examination, also referred to as “Track I” examination, would lead to the application being allowed or finally rejected by one year after the request for prioritized examination was granted. It would not require the applicant to submit an examination support document in which the applicant provides the results and methodology of a novelty search and argues for the patentability of each claim over the art disclosed by the search. Thanks to the Leahy-Smith America Invents Act (the “AIA”), Track I prioritized examination is now available.
Section 11(h) of the AIA, which became effective on September 26, 2011, provides for a $4,800 fee for requesting prioritized examination of a non-provisional utility or plant patent application. This fee is in addition to filing, search, and examination fees, as well as applicable size fees. The fee is reduced by 50% for small entities. Fees for requesting prioritized examination are to be deposited to the United States Patent and Trademark Office Appropriation Account and to remain available until expended. Furthermore, they may be expended only for the purposes specified in 35 U.S.C. § 42(c)(3)(A) (expenses of the USPTO relating to patents. The prioritized examination fee and the reduced fee for small entities set by Section 11(h) of the AIA shall terminate once the Director has exercised his or her authority to set or adjust fees under Section 10 of the AIA.
The Director of the USPTO is required to prescribe regulations for prioritized examination under this section of the AIA – and has done so here. The form for requesting prioritized examination is available here. Only original utility and plant patent applications, or continuations or divisional applications of such applications, may qualify for this kind of prioritized examination. International applications, design applications, reissue applications, and reexaminations are not eligible. The application may have no more than four independent or thirty total claims, and no multiply-dependent claims. The request for prioritized examination must be filed together with the application, and both must be filed electronically in the case of a utility application.