Fast innovation is a significant asset to competitiveness on the world stage. However, when a patent application is filed, the usual process for it to be examined can be lengthy, sometimes taking several years. This explains why the Leahy-Smith America Invents Act (AIA) provided for the establishment of a new expedited patent review program, the Track 1 Prioritized Examination program, which allows an applicant, for a fee, to reach final deposition (allowance, final rejection, abandonment) within 12 months of filing.
Application Type. Prioritized examination is available for original nonprovisional utility and plant applications. It is also possible for continuing applications. Prioritized examination does not apply to international applications, design applications, reissue applications, provisional applications and reexamination proceedings.
Filing requirements. To be granted, the application must be complete. The applicant must submit a certification and request to participate in the Prioritized Examination Program. The request must be filed with an executed inventor’s oath or declaration for each inventor, or the application data sheet. Utility applications must be filed using the patent Electronic Filing System (EFS-Web); plant application must be filed in paper. Finally, for the application to be granted, all due fees must be paid upon or prior to filing.
Claims. Applications having no more than 4 independent claims, 30 total claims, and no multiple dependent claims are eligible for prioritized examination. If an applicant has mistakenly failed to comply with those requirements, applicant will receive a decision on the request for prioritized examination that provides one month to take corrective action; the one-month period is not extendable.
Fees. The Track 1 Prioritized Examination fee is set at $4000 ($2000 for a small entity, $1000 for a micro entity). The total cost for filing an application for which prioritized examination is being sought varies depending on the size of the entity, and on whether the patent is a utility or plant patent. The total fees amount to $6040 ($3100 for a small entity) for requesting Track 1 for a utility patent, and they amount to $5580 ($2940 for a small entity) for requesting Track 1 for a plant patent.
The USPTO sets a limit for the number of requests for the year. The limit is currently set at 10,000 granted requests for prioritized examination for the fiscal year. To know if this limit has been reached, an applicant may consult the statistics posted by the USPTO on its Web site, which include the number of granted prioritized examination requests. Moreover, the Office will post a message in EFS-Web when the number of granted requests is close to the limit. If the limit is reached, the USPTO will turn off the ability to file a request for prioritized examination in EFS-Web.