PRIORITIZED EXAMINATION

Introduction

The USPTO is sensitive to the time delays experienced in the prosecution of patent applications.  Prosecution of a utility application can exceed two to three years.  The Patent Office has tried various methods to accelerate the process.  For example, certain medical applications, environmental applications, and elderly inventors can receive priority.  The Patent Office now provides programs for Accelerated Examination and Prioritized Examination.

Accelerated Examination

The USPTO also maintains the program for accelerated examination.  The program provides definitive action on patentability within 12 months of filing the application.

The applicant files a petition for Accelerated Examination, along with an Accelerated Examination Support Document, at the time the application is filed. The Petition for Accelerated Examination involved a detailed pre-exam inspection.

The program requires the applicant to perform a thorough prior art search.  The Accelerated Examination Support Document (filed by the Applicant) details the search method.   The Accelerated Examination Support Document also contains the applicant’s summary of each prior art reference.  The summary considers each prior art reference in comparison to each claim of the patent application.

The applicant is limited to 20 claims and 3 independent claims.    The applicant is granted a single 30 day period to correct any deficiencies in the Petition or Accelerated Examination Support Document.

Prioritized Examination

The USPTO has established an additional program for prioritized examination under 37 CFR 1.102 and discussed under MPEP 708.02(b).  The applicant must request prioritized examination at the time the application is filed.  This program also requires the applicant pay a surcharge at the time of filing.  The surcharge for a small entity applicant is $2000.00.  This surcharge is in addition to the normal filing fee (currently $750.00 for 3 independent claim and 20 total claims).   If the USPTO accepts the request, a definitive decision is made on patentability within 12 months.  Note the program allows prioritized examination to also be requested when filing a Request for Continued Examination.

The USPTO reviews the filed application papers. The USPTO reserves the right to reject the application from the program.  An accepted application is place on a special docket.  The Applicant is entitled to have a maximum of 30 total claims and 4 independent claims.  (Of course these extra claims entail payment of additional filing fees.)

Note all required fees and filing documents are required to be present at filing.  For example the Declaration or Oath of Inventor must be supplied.  The application must be electronically filed.  There is no provision for curing any deficiencies in the filing papers.  For example, if the name of the inventor supplied in the oath or declaration is not identical to the inventor’s name listed in the Application Data Sheet, the request for prioritized examination will be rejected.  Similarly, any deficiency in compliance with the formal requirements of the drawings, however minor, will be grounds for rejection.

© David McEwing 2019