PTO Issues Final Rule to Implement Prioritized Examination Track (Track I)

The following is from the Schwegman, Lundberg & Woessner Newsletter, April 6, 2011.

The Patent and Trademark Office on April 4, 2011, issued a final rule to implement prioritized examination upon an applicant’s request and payment of a $4,000 request fee and other filing fees.  76 Fed. Reg. 18399.

Under the new rule, 37 C.F.R. 1.102(e), prioritization is available only for an original and complete utility or plant nonprovisional application that contains or is amended to contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims.  The goal is to provide a final disposition (notice of allowanc e, final office action, notice of appeal, declaration of interference, or RCE) within twelve months of an application’s receiving prioritized status.

The effective date of the new rule is May 4, 2011, and requests for prioritization may be submitted on or after that date for new applications filed on or after May 4, 2011. The request must be submitted with the application being filed along with the request fee and other normal filing fees. Time periods for response are not shortened, but filing of a petition for extension of time during prosecution will result in termination of prioritized examination. Note that prioritized examination does not change the odds of obtaining a patent. 

The Federal Register notice states that the Office is limiting requests to a maximum of 10,000 applications during the remainder of fiscal year 2011. The notice also states that the Office lacks statutory authority to extend the small entity fee to examination prioritization, but points out that such authority is contained in the patent reform legislation passed by the Senate (S. 23) and pending in the House (H.R. 1249).

To read the Federal Register notice, click here.

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