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Client Alerts

Patent Reform: What You Need To Know About Prioritized Examination

September 16, 2011

Client Alerts

Patent Reform: What You Need To Know About Prioritized Examination

September 16, 2011

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Patent Reform: What You Need To Know About Prioritized Examination
Patent Reform: What You Need To Know About Prioritized Examination
Today’s signing of the America Invents Act implements Prioritized Examination and creates a process for examining patent applications on a special accelerated track. Applications filed with a Request for Prioritized Examination will be placed on an examination track 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 Monday, September 26, 2011. The Request must be filed with the new application along with a Request fee of $4800 ($2400 for small entities, $1200 for new micro entities). 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 process.

The implementing rules allow filing a continuation application that claims priority to a pending application 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 process does not require a pre-examination search and does not require an accelerated examination support document (and the rigorous requirements for preparing the support document).

The newly enacted law limits the number of applications filed with a Request for Prioritized Examination to 10,000 applications during any fiscal year. This limit will be re-evaluated as additional regulations are developed for the Prioritized Examination process.

The USPTO will likely consider additional rules for implementing their Track III proposal – delayed examination – in view of the public comments. For an overview of the details of Prioritized Examination and the additional proposed examination tracks click here.

Fish & Richardson has more information about the America Invents Act on our website at http://www.fr.com/patent-law-reform-updates/

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.


Please join us for a series of webinars covering What You Need to Do Now, Post Grant Review, Prior Art and Priority Issues, and Lab Notebooks after First to File.

The first in this series, What You Need to Do Now, will be held Tuesday, September 20, at 1pm ET. To reserve your spot for any of these webinars, RSVP to Tracey Spadavecchia at spadavecchia@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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