If asked how quickly would you like obtain a patent, most inventors would reply “now.” Unfortunately, due to a large back-log at the USPTO, applications often wait two or more years before they are even examined by an Examiner. The America Invents Act now provides for Prioritized Examination (“P.E.”), which can significantly reduce the wait.
Under P.E., qualifying applications should receive a final disposition within 12 months after filing. A final deposition includes a notice of allowance, final office action, notice of appeal, declaration of an interference, a Request for Continued Examination (RCE), or abandonment. To comply, an Examiner must review the application and mail an office action within one to three months after the application is filed.
To qualify for P.E., the application must be a new application, including new continuations and divisionals, with no more than 4 independent claims and no more than 30 total claims. A fee of $2400 for small entities such as small companies or individual inventors, or $4800 for large entities, is required. Unlike Accelerated Examination, there is no need to prepare a prior art search report.
However, the USPTO has limited the P.E. program to 10,000 applications per fiscal year to ensure sufficient resources necessary to deliver on the 12-month promise. Thus, if you are considering using P.E., you may want to act quickly before the USPTO sells out. If you have a need for speed, you should consider opting for P.E. Please consult with a patent attorney to discuss your options.
Bobby Braxton is an intellectual property attorney at Carstens & Cahoon, LLP. He prosecutes patents and trademarks and litigates intellectual property disputes. This blog is maintained by Carstens & Cahoon, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.cclaw.com.By Bobby W. Braxton