MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: If I Prioritize Examination of My Application, Should the Patent Office?

by McDonnell Boehnen Hulbert & Berghoff LLP
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Applications under the US Patent and Trademark Office’s (USPTO) prioritized examination program are given “special status” and examined out-of-turn until a final disposition is reached.1 This program has considerably reduced delay incurred during prosecution for such applications. Notably, the average application pendency remains about 32 months.2 In this context, the stated goal to achieve final disposition within 12 months for prioritized examination applications initially seemed ambitious, but so far the USPTO has considerably over-performed even that benchmark. Applications under prioritized examination have reached final disposition in an average of 5.4 months after special status is granted.3

This article reviews the requirements for requesting prioritized examination, discusses whether to request prioritized examination, and considers strategies for using prioritized examination effectively.

What is Prioritized Examination?

Prioritized examination is available both for newly filed, original or continuing applications, and for applications in which a request for continued examination (RCE) was previously or will be filed. The procedures for newly filed applications, also referred to as Track 1, were officially put into place on September 26, 2011 pursuant to the Leahy-Smith America Invents Act.4 The program was then extended to provide procedures for requesting prioritized examination of an application with a previously or concurrently filed RCE, referred to as PE-RCE, on December 19, 2011.5 In general, prioritized examination under either program considerably mitigates prosecution delay.

Requirements for Prioritized Examination

Applications are granted prioritized examination special status upon filing a request and paying additional fees. For Track 1 applications: the request must be made at the time of application filing,6 the application must be filed via the USPTO’s electronic filing system (EFS),7 must be “complete” at time of filing,8 must comply with prioritized examination claim requirements,9 and must include the fees summarized below.10 An information disclosure statement (IDS) is not required at the time of filing, but should be filed promptly in view of the short pendency to a first action on the merits for prioritized examination applications.

Prioritized PE-RCE requests can be made in an application with a previously filed RCE, or can be made concurrently with an RCE.11 The rules for PE-RCE requests do not specify that the application must be complete at the time of making the request, but we encourage any application with an unsigned declaration to be filed alongside a petition under 37 C.F.R. § 1.47, if such a petition was not previously filed.12

When requesting prioritized examination, applicants are required to pay a prioritized examination fee of $4800 ($2400 for a small entity) and a processing fee of $130.13 In addition, applicants must pay all fees that would ordinarily be due and pre-pay the $300 publication fee. However, the publication fee will be refunded if the applicant requests non-publication and then submits a request for refund.14 Failure to include any of the required fees with a request will be grounds for denying the request, and so applicants should strongly consider including an authorization to charge any additional required fees with their request.15

If the requirements and conditions have been met, and the appropriate fees have been paid, the USPTO will grant the request for prioritized examination. Otherwise, the USPTO may dismiss the request, in which case, the prioritized examination fee will be refunded automatically.16 However, the processing fee is retained to cover the cost of processing the request. In accordance with 37 C.F.R. § 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, unless paid by mistake.17

Your Request Is “GRANTED,”  Now What?

A granted request places the application on the Examiner’s special docket until final disposition is reached.18 However, “special status” will be terminated during the course of prosecution if certain triggers occur. Upon termination of special status, the application is placed on the Examiner’s regular docket in accordance with its stage of prosecution.19 The triggers to avoid during prosecution to prevent termination of the applications “special status” are summarized below.

Special status is terminated upon the USPTO mailing: a notice of incomplete application; a notice to file missing parts; a notice to file corrected application papers; a notice of omitted items; or a notice of informal application.

Special status is terminated upon an applicant filing: a petition for an extension of time to file a reply; a request for a suspension of action; an amendment that results in more than 4 independent claims, more than 30 total claims, or any multiple dependent claims; an RCE following a notice of final rejection; or a notice of appeal.

Accordingly, applicants should take care to respond to office actions within the shortened statutory period for response without taking an extension of time (prioritized examination provides for typical 3-month time periods for filing replies to office actions20). In addition, applicants should take care when preparing amendments to remain within the limited number of pending claims. The same caution applies to preliminary or voluntary amendments, which are permissible under the prioritized examination program.21

Tips on Effective Prosecution of Prioritized Examination Cases from MBHB’s Experience

Applicants should consider conducting an examiner interview to build rapport with the Examiner. MBHB professionals’ experience reflects an increase in Examiner cooperation in expedited applications, at least in some cases. While there is surely variability among Examiners, experience suggests that at least some Examiners treat applications on their special docket with an increased willingness to find allowable subject matter.22 We note, however, that the effect is largely Examiner-dependent, and contrary examples can be found.23

Applicants may consider an amendment that violates the claim limitations of the prioritized examination program if it puts the application in condition for allowance. For example, an amendment that casts dependent claims identified as allowable in independent form, or that adds new dependent claims to allowable independent claims may be considered. Even if the amendment causes prioritized examination to be terminated, the application will still be acted on relatively quickly if the amendments put the application in condition for allowance.24 This may be particularly attractive in a response to a final office action, because such an action terminates prioritized examination anyway.

Strategic Concerns When Deciding Whether to Pursue Prioritized Examination

Requesting Track 1 and/or PE-RCE will naturally depend on the particular goals and interests of individual applicants. In simplest terms, applicants should pursue expedited examination for applications in which they desire fast prosecution.

An early indication of patentability and/or allowability may be useful for applications directed to rapidly developing technologies. Expedited examination may allow for enforceable rights to mature sooner rather than later, which is particularly desirable if the industry is developing rapidly enough that within 12 months an applicant’s competitors will foreseeably be engaging in potentially infringing activity.

The early feedback afforded by prioritized examination may also help applicants determine whether and where to pursue additional protection (a prioritized examination allows for US prosecution to be completed within the 12-month window in which foreign filing determinations must be made). For example, the outcome of prioritized examination may help applicants gauge the allowability and/or patentability of their application before pursuing protection in other jurisdictions, or perhaps before deciding to abandon their application and preserve their invention as a trade secret. If the trade secret approach is desired, a non-publication request must be included at the time of filing.

Prioritized examination may also serve as an early indication of allowable subject matter and a chance to build rapport with the Examiner for an application with additional current or anticipated family members. Applicants may also consider filing a continuation or divisional under the prioritized examination procedure upon receiving a restriction requirement or an office action. The prioritized application will quickly catch up to the original, and both applications can be prosecuted in parallel, likely before the same Examiner. This may be preferable to waiting to prosecute the continuation before a new Examiner, particularly if a good relationship is already established with the current Examiner.

In addition to increased filing fees, applicants utilizing prioritized examination will incur the expenses of patent prosecution much sooner and in an expedited manner than if the application were prosecuted under a typical track. For applicants concerned about conserving resources while the market for their technology develops, prioritized examination may not be a good option. Although, learning that an application is unlikely to receive favorable treatment may persuade applicants to pursue protection in fewer jurisdictions, and thereby reduce total expenses.

The USPTO currently limits the number of Track 1 and PE-RCE cases to 10,000 per fiscal year.25 Requests for prioritized examination submitted early in the fiscal year, which begins October 1, are therefore more likely to be granted.26 Applicants may want to check the number of requests already received before filing a request late in the

fiscal year.27

But, is Prioritized Examination Really the Best Way to Expedite Prosecution?

Prioritized examination can effectively expedite examination of a new or pending application. The request can be efficiently prepared, and so far the USPTO has been processing these applications faster than advertised.28 However, it is worthwhile to consider available alternatives to expedite examination, particularly those that require less official fees. For example, special status is given to applications with an inventor over age 65 upon filing a simple form-based petition with no separate fee required.29 Applications may also be expedited upon a petition showing the relevancy of the application to particular technology areas deemed to have national importance,30 or where the claimed technology is subject to a competitor’s prospective manufacture or actual infringement.31 For eligible applications, the patent prosecution highway program can expedite examination.32 The accelerated examination program also allows for expedited examination, but requires preparing and filing a pre-examination search statement and examination support document.33 

Even though the official fees are generally much less for the alternative means of expediting examination noted above, savvy applicants should carefully consider both the full costs associated with preparation and the potential for undesirable estoppel effects. In other words, some applicants may elect to simply pay the prioritized examination fee rather than pursue an alternative petition that requires assertions in their patent prosecution history on the applicability of their technology to particular technology areas, the existence of actual infringement, etc.34 Moreover, the strategic costs associated with expediting alternatives are reinforced when combined with the generally higher preparation expenses required for such petitions.35

Conclusion

The prioritized examination program offers a path to expediting examination that is as simple as a form-based request and some extra  fees. Applicants interested in expediting prosecution should weigh the official fees for prioritized examination against the full costs for any available alternatives. Individual determinations will naturally turn on an analysis of those concerns, but we believe that most applicants are well served by electing to request prioritized examination even where alternative methods of expedited examination are available.

Endnotes

1 See Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures under Leahy-Smith America Invents Act, 76 Fed. Reg. 59050-55, (Sept. 23, 2011) [hereinafter Track 1]; see also 37 C.F.R. § 1.102(e) (2012).

2 USPTO, Data Visualization Center: Your Window to the USPTO, http://www.uspto. gov/dashboards/patents/main.dashxml (last visited Jan. 17, 2013) [hereinafter Patents Dashboard].

3 Id. at Track One-Related Measures.

4 P ub. L. No. 112-29, §11(h) (to be codified at 35 U.S.C. § 41); see also Track 1, supra note 1.

5 Changes to Implement the Prioritized Examination for Requests for Continued Examination, 76 Fed. Reg. 78566-69, (Dec.19,2011) [hereinafter PE-RCE].Track 1 procedures will apply to any newly filed application filed on or after September 26, 2011, and PE-RCE procedures will apply to any application in which a proper RCE has been filed before, on, or after December 19, 2011.

6 Form PTO/SB/424 is strongly recommended. While not required, the USPTO cautions that not using the form may result in a failure to recognize an otherwise proper request. USPTO, USPTO’s Prioritized Examination Program FAQs, Question PE3, http://www.uspto. gov/patents/init_events/track1_FAQS.jsp  (last visited Jan. 17, 2013) [hereinafter FAQs].

7 However, requests for prioritized examination in a plant application must be filed in paper. Track 1, supra note 1, at 59052; PE-RCE, supra note 5, at 78567.

8 A complete application must include: (1) specification; (2) oath or declaration; (3) drawings, when necessary; and (4) all fees, including: filing fee, search fee, examination fee, and, if applicable, excess claims and application size fees. See 37 C.F.R. § 1.51(b).

9 A prioritized examination application can include: no more than 4 independent claims, no more than 30 total claims, and no multiple-dependent claims. Track 1, supra note 1, at 59052; PE-RCE, supra note 5, at 78567.

10 M.P.E.P. 708.02(b); see also Accelerated Examination v. Prioritized Examination, Snippets v. 10, issue 1, Winter 2012, available at http://www.mbhb.com/files/ FirmService/ec735e40-7528-4e97­8998-5adaf51db15f/Presentation/ ceSnippetIssue/Snippets%20Vol%20 10%20Issue%201-030712-FINAL.pdf [hereinafter AE v. PE].

11 For PE-RCE, a request must be filed by EFS, claims must comply with prioritized examination requirements, an RCE must have been previously or concurrently filed, and all fees must be paid. M.P.E.P. 708.02(b); see also AE v. PE, supra note 10.

12 We are mindful that some applications may reach a late stage of prosecution before having a signed oath/declaration on file in view of the new rules that allow an oath/ declaration to be filed at any time prior to issuance. See Changes to Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 48776-825 (Aug. 14, 2012).

13 FAQs, supra note 6, Questions PE-TI3, PE-RCE5.

14 Id., Question PE-TI12.

15 Id., Question PE-TI3.

16 Id., Questions PE-TI15 and PE-RCE12.

17 For abandoned applications, an 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 C.F.R. § 1.138(d). Furthermore, an 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).

18 Final disposition includes the following: mailing a notice of allowance; mailing of a final office action; filing a notice of appeal; completion of examination as defined in 37 C.F.R. § 41.102; filing a RCE; and abandonment of the application. M.P.E.P. 708.02(b), heading II. An application reverts to regular status at final disposition. So, special status is not retained during appeal, for example.

19 For example, an application that receives a first office action and that is thereafter amended to include 5 independent claims is placed on the Examiner’s regular docket for applications having one office action. See Track 1, supra note 1, at 59051; PE­RCE, supra note 6, at 78566.

20 M.P.E.P. 708.02(b), heading II.

21 Track 1, supra note 1, at 59051; PE-RCE, supra note 6, at 78567.

22 Perhaps this effect is due to Examiners’ increased motivation to find allowable subject matter to resolve the case or an increased respect for the subject applications when applicants are willing to pursue expedited examination. It is also possible that increased Examiner cooperation results from a cross-pollination of the accelerated examination procedures, which are commonly referred to together with the prioritized examination procedures by the USPTO. Whatever the reason, statistics from the USPTO suggest that prioritized examination applications receive, on average, less office actions than average during prosecution. The statistics show that typical applications receive an average of 2.54 office actions and spend 7.1 months during prosecution pendency waiting on a response from an applicant, which roughly corresponds to typical 3 month response times. The USPTO does not separately report the number of office actions in prioritized examination cases, but does show that prioritized examination applications spend an average 3.5 months during prosecution pendency waiting on an applicant response, less than half the amount for a non-prioritized application. See Patent Dashboard, supra note 2, Office Time and Applicant Time – Traditional Total Pendency; Average Actions Per Disposal.

23 We have observed that one way the USPTO facilitates the expedited processing of prioritized examination cases is by assigning those applications to its most astute and experienced Examiners, which, of course, can go either direction in terms of Examiner cooperation.

24 See M.P.E.P. 708.01, heading (G).

25 In fiscal years 2011 and 2012 the number of requests did not come close to the cap; in those years the USPTO received 855 and 5027 requests, respectively. So far in FY2013, which began October 1, 2012, the USPTO has received 1327 requests as of December 20, 2012. At this rate, the USPTO will receive fewer than 6,000 requests in FY2013.The USPTO has also indicated the 10,000 limit may be reevaluated. Track 1,supra note 1, at 59052.

26 The USPTO also claims that the ability to request prioritized examination will be automatically deactivated in EFS once the limit is reached. FAQs, supra note 9, Question PE4.

27 USPTO, USPTO’s Prioritized Patent Examination Program, http://www.uspto. gov/patents/init_events/Track_One.jsp (last visited Jan. 15, 2013).

28 Patents Dashboard, supra note 2.

29 See 37 CFR 1.102(c)(1) and MPEP 708.02 (IV).

30 Technology areas include environmental quality, energy, recombinant DNA, super­conductivity, counter-terrorism, and treatments for HIV/AIDS or cancer. A list of the technology areas and a discussion of the requirements for such petitions can be found in M.P.E.P. 708.02.

31 M.P.E.P. 708.02.

32 Applications with a corresponding case that received an indication that at least one claim is patentable may be eligible for the PPH program. See USPTO, Patent Prosecution Highway (PPH) – Fast Track Examination of Applications, http://www. uspto.gov/patents/init_events/pph/index. jsp  (last visited Jan. 22, 2013).

33 The requirements for filing an accelerated examination application can be found at M.P.E.P. 708.02(a). A more thorough comparison of prioritized examination and accelerated examination has also previously appeared in these pages. See AE v. PE, supra note 10.

34 A notable exception would be petitions to expedite on the basis of inventor’s age or health. These petitions would rarely, if ever, implicate estoppel concerns.

35 For a detailed comparison of means to expedite examination, including a cost comparison, see Dennis Crouch and Jason Rantanen, Expediting Prosecution: Comparing Track 1 Prioritized Examination, Patently-O, Dec. 27, 2012, http:// www.patentlyo.com/patent/2012/12/ expediting-prosecution-.html. (Last visited Jan. 15, 2013)

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