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Prioritized Examination Available For A Limited Number Of New Qualifying Applications As Of September 26, 2011

One of the many changes introduced by the new America Invents Act (“AIA”) is an option for “prioritized examination.”  Under the AIA, effective today, September 26, 2011, a new utility or plant patent application (which may also be a new continuing application) can be filed with a request for prioritized examination.  The PTO issued rules just last Friday, September 23, clarifying the prioritized examination process under the AIA. 

The PTO goal for prioritized examination is to provide a “final disposition” of the application within 12 months of prioritized status being granted.  Such final disposition is achieved with an action ending prosecution before the examiner (such as mailing of a final Office Action or a Notice of Allowance, filing a Notice of Appeal, etc.).  Prioritized examination, therefore, does not apply to any appeal or Request for Continued Examination.

Prioritized examination is limited to applications having no more than four independent claims and 30 total claims; and requires a request fee of $4,800 ($2,400 for small entities), and that the application be complete (with the declaration and all fees) at the time of filing.   If an applicant at any point files a petition for an extension of time, prioritized examination is terminated.

Requests for prioritized examination are statutorily limited to a maximum of 10,000 applications in any PTO fiscal year, until the PTO issues rules establishing a different limit.  PTO FY 2011 ends this Friday, September 30, and PTO FY 2012 begins October 1.  We anticipate that there will be a strong demand for prioritized examination, and therefore the quota of 10,000 applications for FY 2012 could be reached fairly quickly.  In view of this possibility, if you are considering prioritized examination for any applications, or need additional information regarding the process, you may wish to contact us soon.

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