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Client Alerts

Client Alert- USPTO Prioritized Examination Pilot will Commence May 4, 2011

April 6, 2011

Client Alerts

Client Alert- USPTO Prioritized Examination Pilot will Commence May 4, 2011

April 6, 2011

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USPTO Prioritized Examination Pilot will Commence May 4, 2011
USPTO Announces Prioritized Examination Pilot (Track I) will Commence May 4, 2011

On April 4, 2011 the United States Patent and Trademark Office (USPTO) officially published its proposed rule changes that will implement Track I of the Prioritized Examination pilot program. The stated goal of the Prioritized Examination pilot (Track I) is to reach final disposition within twelve months.

A Request for Prioritized Examination may be submitted with any original utility or plant application filed on or after May 4, 2011. The Request must be filed with the new application along with a Request fee currently set at $4000. The implementing rules allow first filings as well as continuing applications (e.g., continuations and divisionals). The “original utility or plant application” requirement excludes reissue and reexam filings from the Prioritized Examination pilot.

A continuation application that claims priority to a pending application may be filed along with a Request for Prioritized Examination and the Request fee. The rules do not allow a Request for Prioritized Examination to be filed with a new PCT national stage application under 35 U.S.C. 371. However, the rules do allow a so called bypass continuation application under 35 U.S.C. 111(a) to be filed with a Request for Prioritized Examination.

Unlike the USPTO’s existing Accelerated Examination program implemented in 2006, the new Prioritized Examination Pilot does not require a pre-examination search and does not require an accelerated examination support document (and the rigorous requirements of the support document).

The USPTO is limiting the number of applications filed with a Request for Prioritized Examination to 10,000 applications during the remainder of fiscal year 2011; which ends September 30, 2011. This limit will then be re-evaluated at the end of the 2011 fiscal year.

In June 2010, the USPTO proposed to provide more options to those who file utility or plant applications. The proposed options would determine when the applications are examined. Through the rule changes announced April 4, 2011, the USPTO proposes to implement procedures that will define three examination Tracks. The three Tracks will provide different options for applicants to determine when they want their application examined.

Specifically, the Office proposed to implement procedures under which an applicant would be able to: (1) Request prioritized examination of an original utility or plant nonprovisional application (Track I); (2) request a delay in docketing the application for examination by filing a request for delay in payment of the search fee, the examination fee, the claims fees and the surcharge (if appropriate) for a maximum period not to exceed thirty months in an original utility or plant application filed under 35 U.S.C. 111(a) (Track III); or (3) obtain processing under the current examination procedure (Track II) by not requesting either Track I or Track III processing.

Source: Federal Register

The USPTO is currently considering rules for implementing the Track III proposal – delayed examination – in view of the public comments. The rules for Track III are likely to be available sometime after the Track I commencement date of May 4, 2011. For a brief overview of each of the tracks click here.

For more information or questions, please contact Gregory Walters, Principal in Fish & Richardson’s Washington, DC office at (202) 783-5070 and walters@fr.com.

© Copyright 2011 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this newsletter has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com.

 

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