Prioritized Examination of U.S. Patent Applications is Dead for Now

For the past several years, except when one has been able to take advantage of a Patent Prosecution Highway, or been willing to request expedited examination by providing a list and analysis of prior art, it has been difficult to hasten prosecution of a U.S. utility or plant patent application.

This was supposed change effective May 4, 2011, when a new, expensive, option was to have become available in the form of a request for Prioritized Examination. The ink was hardly dry on this new scheme, when the USPTO reversed its track and decided to put this new scheme on hold in April due to budgetary cuts. Director David Kappos’s message regarding the impacts of the budgetary cuts at the USPTO is available on-line.

Prioritized Examination would have only be available for non-PCT patent applications (utility or plant patent applications, but no design patent applications) containing no more than four independent claims and a total of not more than thirty claims with no multiply dependent claims. Under the scheme envisioned by the USPTO, Prioritized Examination must be requested at the time of filing a patent application. The basic fee at filing was going to be: $4,000 (irrespective of whether the applicant is a small entity or not) plus a processing fee of $130 and a publication fee of $300.

The USPTO had hoped that 10,000 applications could be granted prioritization during 2011. Obviously, that is not going to happen this year and if Congress continues to limit USPTO expenditures to amounts less than the office actually collects in user fees, the message from Director David Kappos seems to suggest that this scheme and other innovations planned by the USPTO to speed up the processing of US patent applications need to be placed on indefinite hold.

[Editor’s Note: Prioritized Examination of U.S. Patent Applications has come back to life since this bulletin was published. A provision of the new America Invents Act not only increases fees temporarily and allows the Director to set new fees henceforth, but also establishes a fee for Prioritized Examination. See America Invents Act: Increases in US Patent Office Fees.]