March 2012 Issue

Did You Know?

As reported in the November 2011 edition of “Did You Know?,” the United States Patent and Trademark Office (USPTO) introduced new provisions for a patent applicant to expedite the examination of its application.  To be eligible for expedited processing, a nonprovisional application filed after September 26, 2011, and via the USPTO’s electronic filing system must not include any multiple dependent claims, and must be limited to four independent claims and thirty total claims.  In addition, the application filing must include all application parts, the regularly required filing fees, a $4,800 ($2,400 for small entities) prioritized examination fee, a $130 processing fee, a $300 publication fee, and a request for prioritized examination.

Currently, expedited processing is available for only 10,000 applications per USPTO fiscal year.  As of February 24, 2012, the USPTO granted expedited status to 854 applications, and another 638 prioritized examination requests were pending USPTO review for the current fiscal year.  These numbers are significantly short of the 10,000 application maximum.

Anticipating that the number of applications accorded expedited status will not reach 10,000, the USPTO recently expanded eligibility for expedited processing to any application in which a Request for Continued Examination (RCE) is filed.  Now, an applicant is permitted to request expedited processing for an application after the filing of an RCE, so long as the USPTO has not mailed a first office action after the RCE filing.  However, such an “after-RCE” request for expedited processing may be granted only once in an application, regardless of whether the application was previously accorded expedited status at filing.

Applicants with commercially relevant applications pending before the USPTO may want to consider filing a request for expedited processing in applications where the filing of an RCE is necessary or has recently occurred.  This may help to secure patent grants quickly where doing so is likely to have an effect on a company’s business.