708.02(b)   Prioritized Examination [R-11.2013]

37 C.F.R. 1.102   Advancement of examination.

*****

  • (e) A request for prioritized examination under this paragraph must comply with the requirements of this paragraph and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or paragraph (e)(2) of this section.

    • (1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a)  that is complete as defined by § 1.51(b), with any fees due under § 1.16  paid on filing. If the application is a utility application, it must be filed via the Office's electronic filing system. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application.
    • (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office’s electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.

Section 11(h) of the Leahy-Smith America Invents Act provides for prioritized examination whereby applicants may request prioritized examination at the time of filing of an application upon payment of appropriate fees and compliance with certain requirements.

Under prioritized examination, an application will be accorded special status until a final disposition is reached in the application. The goal for handling applications under prioritized examination is to on average provide a final disposition within twelve months of prioritized status being granted. Prioritized examination is available at the time of filing an original utility or plant application under 35 U.S.C. 111(a), as set forth in 37 CFR 1.102(e)(1). This is referred to as "Track I" prioritized examination. An "original" application includes a continuing application (i.e., a continuation, continuation-in-part, or divisional application) but does not include reissue applications. In addition, a single request for prioritized examination may be granted for a request for continued examination (RCE) in a plant or utility application, including an application that has entered the national stage under 35 U.S.C. 371, as set forth in 37 CFR 1.102(e)(2). This type of prioritized examination is referred to as "prioritized examination for requests for continued examination" (PE-RCE). The Office maintains a "Quick Start Guide" that illustrates how to file an electronic request for prioritized examination at http://www.uspto.gov/ patents/init_events/track-1-quickstart-guide.pdf.

To maximize the benefit of prioritized examination, applicants should consider one or more of the following: (A) acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest to which the applicant believes he is entitled in view of the prior art to the narrowest which the applicant is willing to accept; (B) submitting an application in condition for examination; (C) filing replies that are completely responsive to an Office action and within the shortened statutory period for reply set in the Office action; and (D) being prepared to conduct interviews with the examiner. The phrase "in condition for examination" in this context means the same as it does with respect to the current accelerated examination program, which is discussed in MPEP § 708.02(a), subsection VIII.C.

The Office intends to monitor the prioritized examination program carefully. As the Office gains experience with prioritized examination as a result of the initial implementation, it may reevaluate the annual numerical cap of 10,000 granted prioritized examination requests. The Office may also consider whether there is a need to limit the number of requests for prioritized examination that may be filed in each Technology Center or by any given applicant. Statistical findings about prioritized examination, including statistics concerning the Office’s ability to meet its stated goals for the program are available to the public on the Office’s Internet Web site at http://www.uspto.gov/patents/init_events/Track_One.jsp.

I.   REQUIREMENTS FOR REQUESTING PRIORITIZED EXAMINATION

The requirements for requesting prioritized examination are set forth below. A request must meet the general requirements specified in subsection I.A. below, and also meet the specific requirements for either subsection I.B. (for a newly filed application) or subsection I.C. (for a request for continued examination).

A.   General Requirements

    • (A) The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application). The procedure for prioritized examination does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings. The procedure for prioritized examination does not apply to international applications that have entered the national stage under 35 U.S.C. 371, except that such an application may undergo prioritized examination if an RCE is filed (see I.C. below). A continuing application will not automatically be given prioritized examination status based on a request filed in the parent application; each application (including each continuing application) must, on its own, meet all requirements for prioritized examination under 37 CFR 1.102(e). A utility or plant nonprovisional application filed under 35 U.S.C. 111(a)  may claim priority to a foreign application under 35 U.S.C. 119(a)-(d) or (f)  and remain eligible for prioritized examination.
    • (B) Upon filing the request for prioritized examination, the following fees must be paid for the application:

      • (1) the prioritized examination fee set forth in 37 CFR 1.17(c),
      • (2) the processing fee set forth in 37 CFR 1.17(i)(1),
      • (3) the publication fee set forth in 37 CFR 1.18(d),
      • (4) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c),
      • (5) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m),
      • (6) the examination fee set forth in 37 CFR 1.16(o),
      • (7) if applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and
      • (8) if applicable, any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).

      Small entity and micro entity fee reductions are available for many of the above fees; see the current fees at www.uspto.gov/curr_fees. If any fee is unpaid at the time of filing of the application, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

    • (C) The application must contain, or be amended to contain, no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims. If an amendment is filed in an application that has been granted prioritized examination that results in more than four independent claims or thirty total claims, or a multiple dependent claim, then prioritized examination will be terminated.
    • (D) The request for prioritized examination must be filed with the application in compliance with 37 CFR 1.102(e), accompanied by the prioritized examination fee set forth in 37 CFR 1.17(c), the processing fee set forth in 37 CFR 1.17(i)(1), and the publication fee set forth in 37 CFR 1.18(d). Applicants are advised to use the certification and request form PTO/SB/424 (or PTO/AIA/424, for applications filed on or after September 16, 2012) which is available on EFS-Web. If any item required for prioritized examination is inadvertently omitted when the application is filed, the missing item(s) will be considered to have been filed with the request under 37 CFR 1.102(e) so long as they are submitted on the same day the application was filed.
    • (E) The request for prioritized examination may be accepted if the requirements under 37 CFR 1.102(e) are satisfied and the limit for the number of requests for the year has not been reached. The number of granted requests for prioritized examination under 37 CFR 1.102(e) is limited to a maximum of 10,000 per fiscal year, although the Office may choose to revise that cap in the future. The Office posts statistics, including the number of granted prioritized examination requests, on its Web site at http://www.uspto.gov/aia_implementation/patents.jsp. In addition, the Office will post a message in EFS-Web if/when the number of granted requests is close to the limit. If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in EFS-Web..
    • (F) Additional requirements must be met depending on whether prioritized examination is requested upon filing of a new application (Track I), see subsection I.B. or incident to filing a request for continued examination (PE-RCE), see subsection I.C.

It is strongly recommended that applicants use the Office’s certification and request form PTO/SB/424 to request prioritized examination, but the form is not required. The form is available on EFS-Web and on the Office’s Internet Web site at http://www.uspto.gov/forms/index.jsp. Failure to use form PTO/SB/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.

B.   Prioritized Examination for Application Filings under 35 U.S.C. 111(a) (Track I)

A newly filed patent application may be granted Track I prioritized examination status if it meets the general conditions in subsection I.A. above, and the additional following conditions:

    • (A) The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application), filed under 35 U.S.C. 111(a)  on or after September 26, 2011. The application must be filed via the Office’s electronic filing system (EFS-Web) if it is a utility application. Plant applications must be filed in paper. Due to the need to limit the number of applications in the prioritized examination program in its initial stages, applications entering the national stage under 35 U.S.C. 371  are not eligible at the time of entry; see subsection I.C. below for prioritized examination of national stage entries under 35 U.S.C. 371  in which as RCE has been filed. However, an applicant who has filed an international application may participate in the prioritized examination program by filing a by-pass continuation; i.e., a new application filed in the United States under 35 U.S.C. 111(a)  that claims the benefit of the earlier international application under 35 U.S.C. 365(c), rather than entering the national stage under 35 U.S.C. 371. In such a case, it is not necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a)  application; however, a translation is required in accordance with 37 CFR 1.52(b)(1).
    • (B) The application must be complete under 37 CFR 1.51(b)  with any excess claims fees paid on filing. Thus, the application must be filed with an executed inventor’s oath or declaration (under 37 CFR 1.63  and 1.64 ) for each inventor, the basic filing fee, the search fee, the examination fee, any excess claims fees, and any application size fee. The provisions of 37 CFR 1.53(f)(3)  which permit submission of the inventor’s oath or declaration to be postponed until the application is otherwise in condition for allowance, in an application filed on or after September 16, 2012, do not apply when submitting a request for prioritized examination.
    • (C) The application must contain no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims. While it is possible to file a preliminary amendment on filing of an application to reduce the number of claims to no more than four independent claims and thirty total claims, and to eliminate any multiple dependent claims, the Office strongly encourages applicants to file applications without any preliminary amendments.
    • (D) The request for prioritized examination and any required fees must be submitted upon filing. If any fee is unpaid at the time of filing the application, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

A nonpublication request under 35 U.S.C. 122(b)(2)(B)(i)  may be submitted together with a request for prioritized examination. However, the publication fee set forth in 37 CFR 1.18(d)  still must be paid upon request for prioritized examination. If the application is not published, a refund of the publication fee may be requested as provided in subsection III. below and in MPEP § 1126.

Color drawings may be filed with new nonprovisional utility patent applications under 35 U.S.C. 111(a)  and in U.S. national stage applications under 35 U.S.C. 371  applications through EFS-Web; see MPEP § 502.05, subsection VIII. See also the EFS-Web legal framework at 74 Fed. Reg. 55200 (October 27, 2009). A petition is still required for entry of color drawings; see MPEP § 608.02 subsection VIII.

If applicant discovers that a required item has been inadvertently omitted from the application filing, a follow-on EFS-Web submission may be filed, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if an inventor’s oath or declaration or the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the inventor’s oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application. Applicants are also reminded that only registered users of EFS-Web can submit follow-on documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed. See also MPEP § 502.05, subsection III. D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.

Requests for prioritized examination will be acted upon once the application has met all formal requirements such that it is ready for examination. A description of what it means for an application to be in condition for examination is provided at MPEP § 708.02(a) , subsection VIII.C. Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice.

A proper request for prioritized examination requires that the application is complete as set forth in 37 CFR 1.51(b). Thus, the application must include a specification as prescribed by 35 U.S.C. 112  including claim(s), any required drawings, an executed oath or declaration under 37 CFR 1.63, and the required fees. If the application is not complete on filing as set forth in 37 CFR 1.51(b), then the request will be dismissed. Applicants may, however, receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52 ) that results in the application not being in condition for examination. These other informalities or deficiencies in the application will delay a decision on the request for prioritized examination, as noted above. However, the request for prioritized examination may still be granted if the application is complete as set forth in 37 CFR 1.51(b).

Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination program. A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.

If the request for prioritized examination is dismissed, applicant can file a petition under 37 CFR 1.181  if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Applicant may not refile a request for Track 1 prioritized examination in order to correct a deficiency in the request because a proper request for Track I prioritized examination (i.e., for prioritized examination of a newly-filed utility or plant application under 35 U.S.C. 111(a)  and not for an RCE) requires that the request be included upon filing.

C.   Prioritized Examination of an Application for a Request for Continued Examination (PE-RCE)

A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions:

    • (A) The application must be a non-reissue utility or plant nonprovisional application filed under 35 U.S.C. 111(a), or that has entered the national stage under 35 U.S.C. 371.
    • (B) The publication fee set forth in 37 CFR 1.18(d) must be paid for the application, either previously or with the request for prioritized examination.
    • (C) The PE-RCE request may be filed concurrently with, or subsequently to, the filing of a request for continued examination (RCE). However, the PE-RCE request must be filed before the mailing of the first Office action after the filing of the RCE.
    • (D) Only a single such request for prioritized examination for a request for continued examination may be granted in an application. The prioritized examination program permits a single request to be granted under 37 CFR 1.102(e)(1) upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted under 37 CFR 1.102(e)(2) upon filing a request for continued examination under 37 CFR 1.114.

The conditions for filing an RCE are set forth in 37 CFR 1.114. Prosecution must be closed; i.e., the application is under appeal, the last Office action is a final action (37 CFR 1.113 ), a notice of allowance has been issued (37 CFR 1.311 ), or there has been an action that otherwise closes prosecution in the application. Any request for prioritized examination for a request for continued examination is premised on the existence of a properly filed RCE. Prioritized examination will not be granted in an application where the RCE does not meet the requirements of 37 CFR 1.114.

Applicant may file a petition under 37 CFR 1.181  if applicant believes a decision dismissing a PE-RCE request is not proper. Applicant should review the reason(s) stated in the decision dismissing the PE-RCE request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Alternately, applicant may file a new PE-RCE request for that same RCE. The new PE-RCE request must include the proper fees and be timely; i.e., it must be filed prior to the mailing of a first Office action after the filing of the RCE.

II.   PROSECUTION OF AN APPLICATION UNDER PRIORITIZED EXAMINATION

The time periods set for reply in Office actions for applications undergoing prioritized examination will be the same as set forth in MPEP § 710.02(b). This is a distinction between prioritized examination and the accelerated examination program, where the time period for reply to Office actions is one month (or at least thirty days) with no extensions under 37 CFR 1.136(a) being permitted (see MPEP § 708.02(a)). Where, however, an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated. In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination. Upon termination of prioritized examination, 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 goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted that one of the following occur: (A) Mailing of a notice of allowance; (B) mailing of a final Office action; (C) filing of a notice of appeal; (D) completion of examination as defined in 37 CFR 41.102; (E) filing of a request for continued examination; or (F) abandonment of the application. An application under prioritized examination, however, would not be accorded special status throughout its entire course of appeal or interference before the Patent Trial and Appeal Board (PTAB), or after the filing of a request for continued examination. As noted above, the submission of an amendment resulting in more than four independent claims or more than thirty total claims is not prohibited, but simply terminates the prioritized examination. Thus, upon mailing of a final rejection (at which point prioritized examination is terminated), applicants may amend the claims to place them in independent form where dependent claims were found allowable, or add new claims, subject only to the limitations applicable to any application under final rejection. See 37 CFR 1.116. Similarly, upon mailing of a notice of allowance, applicants may submit amendments to the claims, again subject only to the limitations applicable to any application that has been allowed. See 37 CFR 1.312. A patent that issues will not contain any indication on its face that it was processed via prioritized examination.

III.   REFUND OF FEES

If a request for prioritized examination is dismissed, the prioritized examination fee set forth in 37 CFR 1.17(c) will be refunded. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The processing fee set forth in 37 CFR 1.17(i) will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP § 1126 if the application is not published under 35 U.S.C. 122(b).

As the termination of prioritized examination does not cause the prioritized examination fee to have been paid by mistake or in an amount in excess of that required, the termination of prioritized examination will not entitle the applicant to a refund of the prioritized examination fee. See 35 U.S.C. 42(d) and 37 CFR 1.26(a).