prioritized vs accelerated examination

Jerold I. Schneider Office 561-404-4350 [email protected] Mobile 561-309-5374

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ACCELERATED EXAMINATION versus PRIORITIZED EXAMINATION

REQUIREMENT ACCELERATED EXAMINATION

PRIORITIZED EXAMINATION

ELIGIBLE TYPES OF PATENT APPLICATIONS:

Utility applications (original, continuation, RCE, divisional, and continuation-in-part).

Utility applications (original, continuation, RCE, divisional, and continuation-in-part);

Plant applications.

NON-ELIGIBLE TYPES OF PATENT APPLICATIONS:

Provisional;

Design;

Re-examination;

Reissue,

International (PCT);

U.S. National stage entry;

Plant applications.

Provisional;

Design;

Re-examination;

Reissue,

International (PCT);

U.S. National stage entry.

ALTERNATIVE WHEN ENTERING U.S. NATIONAL STAGE:

A “continuation” application in lieu of U.S. National Stage entry (also informally referred to as a “by-pass application”) is eligible for accelerated examination.

A “continuation” application in lieu of U.S. National Stage entry (also informally referred to as a “by-pass application”) is eligible for prioritized examination.

PETITION FILING DEADLINE:

Must file petition concurrently with the filing of the application.

Must file petition concurrently with the filing of the application.

EXCEPTIONS TO THE PETITION FILING DEADLINE:

A petition may be filed at any time if based on:

Participation in the Patent Prosecution Highway (PPH)1; or

Age of the inventor (over 65); or

Deteriorating health of the inventor.

A petition for prioritized examination of an RCE application may be filed at any time prior to the first Office Action.

1 The Patent Prosecution Highway (PPH) is limited to U.S. Patent Applications where there is a corresponding foreign application that has already received an indication of patentable subject matter.


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BASES FOR PETITION: Prior art search and explanation of the prior art; or

Participation in the Patent Prosecution Highway (PPH); or

Age of the inventor (over 65); or

Deteriorating health of the inventor.

None other than payment of fees.

FEES (in addition to all regular filing fees: all fee amounts as of January 2014):

$ 140 Processing Fee.

$ 140 processing fee;

$ 40002 prioritized examination fee;

EXCEPTIONS TO PAYMENT OF FEES:

No fee required for:

Inventions that enhance environmental quality;

Inventions that develop or conserve energy resources;

Inventions that contribute to counterterrorism;

Age of the inventor (over 65);

Deteriorating health of the inventor;

Participation in the Patent Prosecution Highway (PPH).

No exceptions.

TOTAL CLAIMS (MAXIMUM):

20 30

INDEPENDENT CLAIMS (MAXIMUM):

3 4

2 The prioritized examination fee is reduced by 50% for inventors qualifying for small entity status and reduced by 75% for inventors qualifying for micro entity status.


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MULTIPLE INDEPENDENT CLAIMS:

Not Permitted. Not Permitted.

APPLICATION FILING REQUIREMENTS

Application must be complete when filed including oath/declaration and fees;

Preliminary amendment not permitted.

Application must be complete when filed including oath/declaration and fees;

Preliminary amendment is permitted but disfavored.

PRIOR ART SEARCH / INFORMATION DISCLOSURE STATEMENT (IDS) :

Required and must accompany Petition for Accelerated Examination except when petition based on:




Not required.

ADDITIONAL REQUIREMENTS OF PETITION:

Detailed explanation about all prior art identified in the prior art search and information disclosure statement;

Identify all limitations in each claim which is found in each item of prior art;

Point out differences between claims and each item of prior art;

Present argument for patentability of each independent claim;

Identify proposed claim construction and support for all “means plus function” language

None.


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in claims;

n.b. These additional requirements do not apply to Petitions based on:




RESPONDING TO OFFICE ACTIONS:

One month;

No extensions of time;

Failure to respond in one month results in abandonment of the application;

May not argue patentability of any dependent claim separately from patentability of independent claims.

One month;

A request/petition for extension of time terminates prioritized status;

Application is not abandoned but reverts to normal examination timeline;

May argue patentability of dependent claims separately from patentability of independent claims.

RESTRICTION / LACK OF UNITY OF INVENTION:

Must agree in advance to elect, without traverse, in response to a telephone restriction requirement from the Examiner;

If Examiner cannot reach attorney, automatic election of the first invention in the claims.

Traversal does not result in termination of prioritized examination status.

EXAMINER INTERVIEW:

Must agree in advance to have interview, at Examiner’s request, to discuss prior art and potential or actual rejections.

No interview requirement.


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(Telephone interview permitted.)

CONTINUATION AND DIVISIONAL PATENT APPLICATIONS:

Continuation and divisional applications are eligible for accelerated examination;

All the petition requirements must be met, and fees must be submitted, concurrently with the filing of the divisional and/or continuation application;

May file continuation or divisional application and maintain prior application, even if prior application is subject to accelerated examination;

May file continuation or divisional application and expressly abandon prior application.

Continuation and divisional applications are eligible for prioritized examination;

All the petition requirements must be met, and fees submitted, concurrently with the filing of the divisional and/or continuation application;

May file continuation or divisional application and maintain prior application, even if prior application is subject to accelerated examination;

May file continuation or divisional application and expressly abandon prior application.

WITHDRAWAL (CHANGE OF STATUS)

May not withdraw application from accelerated status. Must file continuation application and expressly abandon prior application.

Automatic withdrawal from prioritized status upon filing RCE and/or extension of time to respond to Office Action.

RCE – REQUEST FOR CONTINUED EXAMINATION:

Filing RCE does not result in withdrawal from accelerated examination;

RCE maintains accelerated examination status.

Filing RCE results in automatic withdrawal of prioritized examination;

Petition and fee for prioritized examination may be filed concurrently with filing the RCE;

Petition and fee for prioritized examination may be filed after filing the RCE but before the first Office Action after the RCE is filed;


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If an application has been granted prioritized examination, only one RCE will be eligible for prioritized examination.

CONCLUSION OF EXAMINATION PROCEEDINGS:

No accelerated procedure after final rejection;

No accelerated procedure after Notice of Allowance.

No prioritized procedure after final rejection;

No prioritized procedure after Notice of Allowance.

prioritized vs accelerated examination

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