AMERICA INVENTS ACT - Prioritized Examination of Patient Applications

March 26, 2012

On Sept. 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act of 2011 (AIA). The AIA constitutes the first major revisions to the United States patent laws in over five decades.

This article discusses the new prioritized examination process available to patent applicants in view of the implementation of the AIA. Further articles will follow on a monthly basis which will discuss other changes made to the United States patent system by the AIA.

For years, upon filing a patent application, the United States Patent and Trademark Office (USPTO) assigned the application to a particular art unit, and then the applications within each art unit would be examined in the order they were filed. Through this process, prosecution of the application to a final disposition currently takes, on average, about three years. Recognizing this time period may not be acceptable to some patent applicants, the USPTO currently offers two different routes to speed up the examination process of applications. The accelerated examination program has a goal of providing a final disposition of an application in twelve months, but in order to utilize this program, the application must be accompanied by additional information at the time of filing, which supports the patentability of the invention. Alternatively, a petition to make special can be filed in connection with an application in order to have the application examined out of order, but in order for the petition to be granted, the patent applicant has to show that special circumstances exist (e.g., infringing activity or the advanced age/ill health of one of the inventors) that warrant such action.

On Sept. 26, 2011, the AIA brought into effect a new avenue for prioritized examination of certain types of patent applications. On Dec. 19, 2011, this new avenue was extended to another type of patent application.

Unlike the accelerated examination program and the petition to make special, prioritized examination does not require burdensome and expensive up front work or the existence of special circumstances – but it does require the payment of a significant fee. More specifically, upon filing a request for prioritized examination and paying the prioritized examination fee, an application will be accorded special status and placed on a patent examiner's special docket throughout its entire course of prosecution until a final disposition is reached in the application. The USPTO's goal for handling applications under prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.

Being able to potentially obtain a patent approximately one year after the filing of an application (under prioritized examination) as opposed to approximately three years after the filing of an application (under the current normal examination process), with only the requirement to pay an extra fee at the time of filing, might be of great importance to certain patent applicants, including, for example, those involved in industries where technology is advancing rapidly or those looking to leverage patent rights to establish and/or maintain their position in the marketplace.

A patent application may be granted prioritized examination status as long as the following conditions are met:

(1) The application is of a type where prioritized examination is available. For example, prioritized examination is available to most utility patent applications but is not available to design patent applications.

(2) The application must be complete with any excess claim fees paid on filing, and the application must be filed via the USPTO's electronic filing system (if it is a utility application). Thus, the application must be filed with an oath or declaration, the basic filing fee, the search fee, the examination fee, any excess claims fees and any application size fee.

(3) The application must contain no more than four independent claims and no more than 30 total claims. The application must also not contain any multiple dependent claims.

(4) A request for prioritized examination must be filed with the application and be accompanied by the prioritized examination fee, as well as by the processing and publication fees. The prioritized examination fee is currently set at $4,800.00 ($2,400.00 for small entities).

(5) The USPTO has not previously reached a predetermined limit in the amount of requests for prioritized examination that it can accept in a fiscal year. The USPTO currently will not accept more than 10,000 requests for prioritized examination per fiscal year.

Once an application has been granted prioritized examination status, the application will continue to hold this status until there has been a final disposition or until the prioritized examination of the application is terminated. A final disposition will occur, for example, when a notice of allowance is issued, when a final office action is issued or when the application is abandoned. Termination of a prioritized application will occur, for example, when a patent applicant files a petition for an extension of time to file a reply to an Office action, when the patent applicant files a request for a suspension of the action, or when an amendment is filed which results in the application having more than four independent claims, more than 30 total claims, or a multiple independent claim.

Once prioritized examination of an application is terminated, the application will be removed from the examiner's special docket and placed on the examiner's regular docket in accordance with its stage of prosecution. The termination of prioritized examination will not entitle the patent applicant to a refund of the prioritized examination fee.

For more detailed information about the prioritized examination of patent applications, other changes made to the United States patent system by the America Invents Act, or any other intellectual property issue, please contact Jim O'Malley at jomalley@clarkhill.com or any member of Clark Hill's IP practice group.