Expanded Track I Prioritized Examination of Patent Applications

By: Stan Chalvire

The U.S. Patent and Trademark Office (USPTO) has issued final rules (75 Fed. Reg. 78566) extending the prioritized examination (Track I) provisions to patent applications in which a Request for Continued Examination (RCE) has been filed (see, Three Track Patent Examinations: USPTO Provides Further Guidance). The recently issued final rules provide patent applicants with the flexibility to accelerate the processing and examination of their applications in which an RCE has been filed by according such applications special status. An application that is accorded special status is placed on the Examiner’s special docket throughout its entire course of continued prosecution before the Examiner until a final disposition (e.g., the mailing of a notice of allowance or final office action, or the filing of a notice of appeal or subsequent RCE) is reached. The USPTO’s goal for handling applications under prioritized examination is to, on average, provide a final disposition of the application within twelve months of prioritized status being granted.

Requesting prioritized examination after the filing of an RCE requires that:

  1. The RCE be filed in an original utility or plant non-provisional application filed under 35 U.S.C. 111(a) or that has entered the national stage under 35 U.S.C. 371, accompanied by, among other things, a prioritized examination fee of $4,800 (which is subject to a fifty percent small entity discount);
  2. The request for prioritized examination be filed via the USPTO’s electronic filing system (EFS-Web) either concurrently with, or subsequently to, the filing of an RCE;
  3. Upon filing the request for prioritized examination, the application must contain or be amended to contain no more than four independent claims and no more than thirty total claims and no multiple dependent claims and, to the extent that an amendment is filed in an application that has been granted prioritized examination that exceeds these requirements, the prioritized examination will be terminated; and
  4. The request is filed prior to the USPTO’s acceptance of 10,000 requests for Track I prioritized examination under Sec. 1.102(e) in the fiscal year.

The final rules concerning the prioritized examination of applications in which an RCE has been filed became effective on December 19, 2011, and are applicable to any patent application in which an RCE has been filed before, on, or after December 19, 2011. For more information regarding prioritized examination, or to discuss other strategies for expediting the examination of your patent applications, please contact Stan Chalvire.

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