Guest post by Baltazar Gomez, PhD. Dr. Gomez is a Patent Agent at Teva Pharmaceuticals USA.
The United States Patent and Trademark Office published final rules on December 19, 2011 to implement a prioritized examination program for applications in which a Request for Continued Examination (RCE) has been filed. The Office expects that this program will provide patent applicants with added flexibility to accelerate processing of their RCE applications. An application is eligible for this program if only one RCE has been filed for the application.
The effective date for the program is December 19, 2011, and will apply to any patent application in which a proper RCE has been filed before, on, or after December 19, 2011. The requirements, set forth in 37 C.F.R. 1.102(e)(2), are the following.
- The RCE is for an original utility or plant nonprovisional application or a U.S. national stage application.
- The request for prioritized examination is filed electronically using request form PTO/SB/424. The request may be filed with, or after, the filing of the RCE. The request must be filed before the first Office Action after the RCE.
- At the time of the request, the application must contain or be amended to contain no more than four independent claims, no more than thirty total claims, and no multiple dependent claims.
- The request is accompanied by the prioritized examination fee ($4800), the processing fee ($130), and if not previously paid, the publication fee ($300).
- The request is one of 10,000 for the fiscal year.
The limit on the number of requests includes requests for prioritized examination for initial examination and requests for prioritized examination after filing an RCE. As of January 3, 2012, 1,694 Track I petitions have been filed. The Office has issued decisions on 1,231 requests, granting 1,218 (98.9%) of the requests it has decided. A first Office Action has issued in about 31 days after approval of the request, and about 66 days after filing of the request. The first patent on a Track I application issued on January 10, 2012 (U.S. Pat. No. 8,094,942), which was filed on September 30, 2011.
An application accorded special status after filing an RCE will be placed on the examiner's special docket throughout its entire course of continued prosecution before the examiner until a final disposition is reached in the application. An application under prioritized examination, however, would not be accorded special status throughout its entire course of appeal or interference before the BPAI, or after the filing of a subsequent RCE. The goal of the program is to provide a final disposition within twelve months of prioritized status being granted. A final disposition is any of the following: mailing of a notice of allowance; mailing of a final Office Action; filing of a notice of appeal; completion of examination under 37 C.F.R. 41.102; filing a subsequent RCE; or abandonment of the application.
Filing an amendment in the application that results in more than four independent claims, more than thirty total claims, or a multiple dependent claim is not prohibited, but it will terminate prioritized examination. An Applicant will not receive any refund of the prioritized examination fee if prioritized examination is terminated.
The new prioritized examination for RCE applications differs from that for an original application in at least two ways. First, a U.S. national stage application in which an RCE has been filed is eligible for this program. Such an application is not eligible for the basic Track I program (37 C.F.R. 1.102(e)(1)). Second, a request for prioritized examination can be filed after an RCE has been filed. In the basic Track I program, a request must be filed at the same time the application is filed.
The new prioritized examination for RCE applications appears to mitigate some effects of previous changes to Office procedures for handling RCE applications. These previous changes to RCE handling at the Office have significantly delayed examination of many RCE applications.