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April 11, 2011

U.S. Patent Office Creates Opportunity for Expedited Patent Examination

On April 4, 2011, the U.S. Patent and Trademark Office ("PTO") issued a final rule providing Applicants with the option to request prioritized examination of certain new patent applications. Beginning May 4, 2011, and extending throughout this fiscal year, or until the PTO receives 10,000 requests, expedited examination is available to Applicants whose applications meet specific requirements and include the payment of an additional government fee. PTO Director, David Kappos, stated the overarching goal of the expedited examination program is to "bring the most important new products and services to market more quickly."

Along with the request fee, there are several other requirements for eligibility in this expedited examination program. More specifically, eligible applications are limited to four independent claims and 30 total claims. In addition, applications must be "complete" such that all fees are paid and all required papers are submitted at the time of filing. The expedited examination program is limited to so-called "first filings;" meaning that original and continuation applications are eligible, but post-patent submissions, such as reissues and reexaminations are not. Design patent applications also are not eligible under this program.

The PTO previously instituted an earlier version of an accelerated examination program. This earlier version included numerous hurdles, including the filing of an extremely detailed patentee-conducted search and examination report with the application, and as a result this earlier program has been viewed as an unrealistic option. The new expedited examination program now complements the prior accelerated examination program and offers a more viable option for certain Applicants. Filing for expedited status will expedite examination, but one should not interpret the PTO's stated twelve month goal to "final disposition" as an absolute indicator of the time from patent application filing to patent issuance. The PTO has provided that the one-year period is designed to obtain "final disposition," which for all intents and purposes would guarantee up to two separate examinations of the application during that period. Given that the current pendency at the PTO is approximately three to five years or more, in some instances, this program still provides incentives for certain technologies and products that could be superseded earlier than others or for those Applicants that desire prompt decisions in regard to their inventions.

The new prioritized or "Track I" procedure is set forth in a final rule adopted by the PTO earlier this month, after the unveiling of, and public commentary on, a proposed three-track system in the summer of 2010. While the proposed system has limitations, the PTO, under the auspices of the new Director, is clearly attempting to provide real-time solutions to at least its pendency and backlog issues by now providing additional options in terms of patent examination. It remains to be seen whether this new system will be widely utilized. A comparable no-cost expedited examination system has existed for many years in Europe with fairly minimal interest.

It should be noted that there also are advantages to other Applicants in having a patent stand as "pending" for as long a time as possible. To that end, a later but yet unadopted provision of this system is the additional option of deferred examination. In summary, the institution of a prioritized examination procedure now at least offers a useful option for consideration by patentees.

If you require further information regarding If you require further information regarding the information presented in this Legal Alert and its impact on your organization, please contact any of the members of the Practice Area.

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