In a notice published in the Federal Register (84 Fed. Reg. 45907) last week, the U.S. Patent and Trademark Office issued an interim rule in which it increased the limit on the number of prioritized (Track I) examination requests that may be accepted in a fiscal year from 10,000 to 12,000. The increase in accepted requests took effect on September 3, 2019.
The Office implemented the prioritized examination provisions of the Leahy-Smith America Invents Act in September 2011 (see "USPTO Implements Prioritized Examination Track under AIA"). The AIA had set forth a prioritized examination fee of $4,800 (since reduced to $4,000), which applicants must pay in addition to filing, search, and examination fees (including any applicable excess claims and application size fees) and processing and publication fees (the prioritized examination fee for small entities is reduced by 50%). In addition, the AIA specified that to be eligible for prioritized examination, an application must contain (or be amended to contain) no more than 4 independent claims and no more than 30 total claims. The AIA also limited the number of requests for prioritized examination that the Director may accept to 10,000 per fiscal year.
When originally implementing prioritized examination, the Office noted that it would accord prioritized examination applications special status and place them on the examiner's special docket, and that the following actions taken by the applicant would terminate prioritized examination:
• Filing a request for continued examination (RCE);
• Filing a petition for an extension of time to file a reply;
• Filing a request for a suspension of action; or
• Filing an amendment that results in more than four independent claims, more than thirty total claims, or a multiple dependent claim.
The Office also noted that to participate in the Track I program, applicants had to fulfill the following requirements:
• File a new original utility or plant nonprovisional application under 35 U.S.C. § 111(a) (the procedure does not apply to international, design, reissue, or provisional applications, or reexamination proceedings, but can be used for continuing applications);
• File an application that is complete under 37 C.F.R. § 1.51(b), including the oath or declaration, and payment of the filing, search, and examination fees, any applicable excess claims fee, and any applicable application size fee at the time of filing;
• File the application via the Office's electronic filing system (EFS-Web);
• The application cannot contain more than four independent claims and thirty total claims or any multiple dependent claims;
• Request prioritized examination (preferably by using Form PTO/SB/424); and
• Pay the required fees for requesting prioritized examination at the time of filing (i.e., the prioritized examination fee set forth in 37 C.F.R. § 1.17(c), the processing fee set forth in 37 C.F.R. § 1.17(i), and the publication fee set forth in 37 C.F.R. § 1.18(d)).
In March 2014, the Office published an interim rule indicating that the time periods for meeting certain requirements for filing a request for Track I prioritized examination could be expanded while maintaining the Office's ability to timely examine the patent application (see "USPTO to Permit Delay in Meeting Certain Prioritized Examination Requirements"). The requirements for which the time periods were expanded were: the submission, upon filing, of an inventor's oath or declaration and all required fees, as well as an application containing no more than four independent claims, thirty total claims, and no multiple dependent claims. In particular, the Office changed the rules to (1) postpone the requirement to file an inventor's oath or declaration if an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) is present upon filing, (2) provide a non-extendable one-month period (following notification of noncompliance from the Office) to file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, or any multiple dependent claim, and (3) no longer require the payment of excess claims fees or the application size fee upon filing.
In its latest notice, the Office notes that the number of requests for prioritized examination has increased steadily over the last few years to the point that the limit of 10,000 requests for prioritized examination that may be accepted in any fiscal year will be reached if the limit is not increased. The Office also notes that the number of applications accepted for prioritized examination will remain a small fraction of the approximately 650,000 applications and requests for continued examination that the Office examines per fiscal year. Thus, the Office has determined that the Track I program may be further expanded to permit more applications to undergo prioritized examination while maintaining the ability to timely examine all prioritized applications.
The Office is accepting written comments regarding the most recent interim rule until November 4, 2019. Comments can be sent by e-mail addressed to AD39.comments@uspto.gov; submitted by regular mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Kery Fries, Senior Legal Advisor, Office of Patent Legal Administration; or sent via the Federal eRulemaking Portal website (http://www.regulations.gov).
