New Track I Prioritized Examination for RCE Applications

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.

  1. The RCE is for an original utility or plant nonprovisional application or a U.S. national stage application.
  2. 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.
  3. 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.
  4. The request is accompanied by the prioritized examination fee ($4800), the processing fee ($130), and if not previously paid, the publication fee ($300).
  5. 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.

33 thoughts on “New Track I Prioritized Examination for RCE Applications

  1. 33

    Original app includes continuation and divisional, but does not include international, design, reissue, provisional, and reexamination proceedings.

    Note that continuing apps will not automatically be given prioritized examination status based on the request filed in the parent app.

    See page 3, column 1-2: link to

  2. 31

    Re-characterizing an amended application in a Request for Continuing Examination as a “New” and forcing applicants to incur an additional excessive expense of $ 4800.00 to pay to promptly prosecute an amended application that should naturally be a part of the Amended Application prosecution process that is examined within a 56 day time limit strikes me as arbitrary, capricious, and downright unfair. I am actually surprised that there is not more of a reaction to this “policy” on the part of external practitioners. First, to implement a policy that is so financially prejudicial to the Applicant community at-large and is not justifiable given the existing manner of prosecuting amended non-RCE amended applications, and then to implement a purported remedy under the guise of fixing this senseless policy of demanding an excessive payment to prosecute an amended RCE application before multiple continuation and divisional applications with earlier filing dates, i.e. pay for a Track I prioritized examination, cannot possibly be well construed as a solution, but rather as a mere cover-up or bandaid which does not fix the root of the problem run amok, which succinctly restated is that Applicants should not have to pay extra for the examination of an Amended Application in a Request for Continued Examination where such an examination should follow the natural course of other amended applications on an Examiner Amended docket, not an Examiner Continuing New Docket.

  3. 30

    Who would be that high up in the food chain to commit a FELONY and remove my education to gain the upper hand and claim I am ILL? WOW! Can’t wait for my 6th. Amendment Right. Isn’t that TREASON?

  4. 29

    So I was pronounced dead… And my GED was pronounced to be Dians work? Now I get why there is no record of my employment. Or the pay related to my GED School payments. I was paid to go to School.It is called work payments that should be recorded on my FICA. So you even hid my Education. And my Car. Now wait till I bring forth so much for you.I can’t wait till my memory serves you.Makes no Census.

  5. 28

    The good thing is the 8 pages I copied are recorded. and they do not include the Drawings. But they do include the Page regarding DOOGIE, and a page that stated the CROSS REFERENCE TO RELATED APPLICATIONS NOT APPLICABLE. WHICH MUST HAVE SOMETHING TO DO WITH AN IDS THAT WAS NOT INCLUDED.. WHY? AND ALSO ANOTHER FROM ME ASKING WHAT?
    I guess my life is not unlike Jennifer Hudson’s in tragedy. The only difference is her Voice is her Art. Me, I was never allowed to have a voice although my Medium is a different art. But I will have a voice now won’t I Dingleberry and Company.

  6. 27

    Smash – thx for reply. Regardless, if the USPTO would simply improve the broken parts of the system instead of wasting time putting corrupted practices in place, everyone would benefit.

  7. 26

    I believe that you are quite mistaken if you think there is a true attempt to “help” the little guy anymore.

    Just take a look at the AIA and the several reports coming out from the Office. It’s all about international big players and how the Office can make it easier for them.

  8. 25

    Why doesn’t the USPTO simply do its job in a logical fashion without the use of “bribes”.
    It is logical that RCE’s be examined in turn as if any response and not as if a newly filed App.
    While I’m complaining, the USPTO could hire a few more employees to scan faxes. (Yeah, another non-sequitur for me tonite).
    Time for the USPTO to stop “inventing” descrimination tactics and use that time to examine app’s.
    For a country that kept “first to invent” for so long; and has Provisionals, both presumably to help the little guy, the US sure knows how to be hypocritical.

  9. 23

    FYI–that 1,694 figure includes 855 which were filed in FY2011. The 10,000 limit is per fiscal year (which begins Oct. 1). Thus, for the first three months of FY2012 there were only a little over 800 requests filed. Clearly there is little risk of reaching the 10,000 limit.

    Also, thus far first office actions or in some cases notices of allowances are going out pretty quick (less than 3 months in most instances).

  10. 21

    As a matter of fact, a very small percentage has requested Track I expediting, contrary to what the cognoscenti thought would happen.

    Who are “the congnoscenti” and can you provide a link showing where they made this prediction?

  11. 20

    Then you need to try again, as the question you asked is quite asinine.

    Do you really not think it important to actually achieve the intent of having a patent, regardless of the speed of prosecution, or do you really want to settle for a quick (and final) rejection.

    If you were not so quick with your intent to be a smart-axx, you would have realized that you left the smart behind and achieved only being a axx.

  12. 18

    What is the official time frame an examiner has to respond to an RCE with amendment?

    There isn’t one. That’s why the comment above concerning the Appeal route is so dead on.

  13. 17

    how is appeal ever a viable alternative?

    Gee, let me think awhile-OK how about you appealing to get the patent right that you aotherwise would not get (sooner or not).

    Perhaps you had a different question in mind…

  14. 16

    “4. The request is accompanied by the prioritized examination fee ($4800)” There’s the rub.

    Whatever happened to MPEP 203.08.II: A status inquiry is … in order after reply by the attorney (when) 5 or 6 months have elapsed with no response from the Office.

    Will our RCE’s just sit until we pay up? What is the official time frame an examiner has to respond to an RCE with amendment?

  15. 15

    Two questions:

    1. How much more PTA are you really expecting to get once you enter Track I?

    2. If your objective is to get an application allowed sooner (the main benefit of Track I), how is appeal ever a viable alternative?

  16. 14

    Dear Robert KS –

    As a matter of fact, a very small percentage has requested Track I expediting, contrary to what the cognoscenti thought would happen. Only 1,694 Track I petitions have been submitted to the USPTO as of 2011 year end. See link to

  17. 10

    I wish you could petition and pay the fee at ANY time to have the app moved to an accelerated exam schedule.

    You can file a continuation at any time.

  18. 9

    Many smaller clients like the long time before FAOM because it allows them to delay costs associated with prosecution while operating under patent pending with a published application.

    I wish you could petition and pay the fee at ANY time to have the app moved to an accelerated exam schedule.

    But yes, the whole “make it slower” thing and then “you can bribe us to not make it slower” raises an eyebrow.

  19. 8

    Kinda reminds me of the UK Anti-Bribery Act.

    The Bribery Act creates the following offences:
    Active bribery: promising or giving a financial or other advantage.

  20. 6

    Only if you want your actual patent. You can always refuse to pay the publication fee at issue and run the risk of losing your patent rights (I am sure that you realize that the non-publication request is only for non-publication during Office prosecution).

  21. 5

    The best part about this is that you really have no idea how much acceleration your money is buying. Does the examiner have five cases on their Continuing New docket, or fifty? Is your case at the top of their docket, or the bottom? The only way to find out is to call them and ask, but even the examiner is unlikely to know just how long it would normally take for them to get to your case.

  22. 2

    You call them bribes…

    This introduction of prioritized examination is a sad commentary on the state of the Patent Office and government generally.

    I would prefer it if the PTO improved service for everyone. It would be amusing if in a year or so we learned that the percentage of applications for which prioritized attention was requested was around 1%. Occupy Alexandria, anyone?

  23. 1

    What do you call emoluments given for better or prompt service, or depending on where you are, any service, by a government employee?

    First deferring prompt consideration of RCEs and then demanding fees for prompt consideration is abusive, IMHO.

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