Prioritized Examination Program Expanded to Include RCE Filings

While not a typical post grant topic, prioritized examination (PE) is another feature of the recent America Invents Act that may be of interest to those with high value applications stalled at the USPTO.

As a reminder, PE under the AIA is essentially a codification of the USPTO’s track 1, Enhanced Examination Timing Control Procedures Initiative. Until passage of the AIA, and the increased funding that came along with the 15% surcharge, the Track 1 program was suspended. Thereafter, the Office began accepting requests for PE.

PE allows, as the name implies, examining certain applications out of turn based on a priority status and be disposed of within 12 months. That is to say, upon payment of a fee of $4800 for large entities, $2400 for qualifying micro entities, “priority” can be purchased. There is a cap of 10,000 such requests for any one fiscal year. Judging by initial filing rates (300 per month) that number is not likely to be exceeded.

Previously, applications undergoing prosecution, such as those at the RCE stage could not participate in this program….which makes sense in that there is no value in jumping to the head of line if already there. Why anyone would feel the need to pay such a hefty fee for a case already being examined is beyond me, yet the USPTO has provided for that eventuality in yesterday’s final rule publication in the Federal Register .

Of course, once an RCE is filed, the application no longer appears on the examiners special docket, and the application can slow as compared to past Office practices. Still, it is not clear to me if such a delay is worth the cost of PE. Nevertheless, the PTO is now expanding Track 1 to include RCE’s.

The Final Rule was published yesterday, in the Federal Register. (PE FAQ here)

An RCE application may be granted prioritized examination status if the following conditions are met:

1.  RCE filed in an original (non-reissue) utility or plant application filed under 25 USC 111(a) or entered into the national stage under 35 USC 371.

2.  The Request for Prioritized Examination is filed via EFS-Web (except in a plant application) before a post-RCE Office Action is issued.  The Request for Prioritized Examination may be filed concurrently with or subsequently to the filing of the RCE.

3.  Application must contain or be amended to contain no more than 4 independent claims and 30 total claims at the time the Request for Prioritized Examination is filed, and may not contain any multiple dependent claims.

4.  Request for Prioritized Examination must be accompanied by the Prioritized Examination fee ($4800/$2400), the processing fee ($130) and the publication fee ($300 – if not already paid).

5.  Only one Request for Prioritized Examination of an RCE can be filed in any given application.

Note:  RCE in a U.S. national stage application is eligible for this program, while such applications are not eligible for basic Track 1 Prioritized Examination, and Request for Prioritized Examination can be filed after an RCE has been filed (so long as no Office Action has issued since the RCE filing).