USPTO Issues Final Rule to Implement Prioritized Examination for Requests for Continued Examination | Practical Law

USPTO Issues Final Rule to Implement Prioritized Examination for Requests for Continued Examination | Practical Law

The USPTO issued a final rule implementing the prioritized examination process for requests for continued examination under the Leahy-Smith America Invents Act (AIA). The rule sets out procedures, goals and conditions for a patent application to qualify for prioritized examination.

USPTO Issues Final Rule to Implement Prioritized Examination for Requests for Continued Examination

by PLC Intellectual Property & Technology
Published on 20 Dec 2011 • USA (National/Federal)
The USPTO issued a final rule implementing the prioritized examination process for requests for continued examination under the Leahy-Smith America Invents Act (AIA). The rule sets out procedures, goals and conditions for a patent application to qualify for prioritized examination.
On December 19, 2011, the USPTO issued a final rule updating the prioritized examination process for patent applications under the Leahy-Smith America Invents Act (AIA). Under the updated rule, a patent applicant may request prioritized examination of a patent application after filing a proper request for continued examination. The final rule sets out several conditions for a patent application to qualify for prioritized examination status, including:
  • The request for continued examination must be in an original utility or plant non-provisional application or an international application that has entered the national stage.
  • For utility applications, the request for prioritized examination must be filed through the USPTO's electronic filing system.
  • The application must not contain, or be amended to contain, more than four independent claims, more than 30 total claims or any multiple dependent claims.
  • The appropriate fee must accompany the request for prioritized examination.
  • The request must be filed before the first office action after the request for continued examination is filed.
  • Only one request for prioritized examination may be granted in an application.
In addition, under the AIA, the USPTO may only accept 10,000 requests for priority examination per fiscal year. This includes requests for prioritized examination both for initial examination and after filing a request for continued examination.
As of December 19, 2011 patent applicants may begin using this new prioritized examination system after filing a proper request for continued examination, even if the request for continued examination was filed before the date of this rule. Prioritized examination is designed to provide patent applicants with a way to accelerate the examination of their applications.