708.02(a) Accelerated Examination [R-01.2024]

All petitions to make special, except those based on applicant’s health or age or participation in the Patent Prosecution Highway (PPH) pilot program must meet the requirements set forth in subsection I below. See MPEP § 708.02 subsection I or II (where appropriate) for the requirements for filing a petition to make special based on applicant’s health or age. For prioritized examination under 37 CFR 1.102(e), see MPEP § 708.02(b). For participation in the Patent Prosecution Highway program, see MPEP § 708.02(c).

I. REQUIREMENTS FOR PETITIONS TO MAKE SPECIAL UNDER ACCELERATED EXAMINATION

A new application may be granted accelerated examination status under the following conditions:

• (A) The application must be filed with a petition to make special under the accelerated examination program accompanied by either the fee set forth in 37 CFR 1.17(h) or a statement that the claimed subject matter is directed to environmental quality, the development or conservation of energy resources, or countering terrorism. See 37 CFR 1.102(c)(2). Applicant should use form PTO/SB/28 for filing the petition.
• (B) The application must be a non-reissue utility or design application filed under 35 U.S.C. 111(a).
• (C) The application, petition, and required fees must be filed electronically using the USPTO patent electronic filing system. If the USPTO patent electronic filing system is not available to the public during the normal business hours for the system at the time of filing the application, applicant may file the application, other papers, and fees by mail accompanied by a statement that the USPTO patent electronic filing system was not available during the normal business hours. The applicant should prominently indicate the paper filing is under the accelerated examination procedure to help ensure proper processing. Note, however, when the documents are filed in paper instead of through the USPTO patent electronic filing system, the final disposition of the application may occur later than twelve months from the filing of the application. See subsection VIII.F. below for more information.
• (D) At the time of filing, the application must be complete under 37 CFR 1.51 and in condition for examination. For example, the application must be filed together with the basic filing fee, search fee, examination fee, and application size fee (if applicable), and an executed inventor’s oath or declaration (under 37 CFR 1.63 or 1.64) for each inventor. See subsection VIII.C. below for more information. It is noted that while an inventor’s oath or declaration is not required to obtain a filing date for applications filed under 35 U.S.C. 111(a), it is a requirement under 37 CFR 1.51 and must be present upon filing for entry in the program. Permitting an oath or declaration after filing would delay processing of the application and make it difficult to achieve the program’s goal of reaching a patentability decision within twelve months of the filing date.
• (E) The application must contain three or fewer independent claims and twenty or fewer total claims. The application must also not contain any multiple dependent claims. By filing a petition to make special under the accelerated examination program the applicant is agreeing not to separately argue the patentability of any dependent claim during any appeal in the application. Specifically, the applicant is agreeing that the dependent claims will be grouped together with and not argued separately from the independent claim from which they depend in any appeal brief filed in the application (37 CFR 41.37(c)(1)(iv)). The petition must include a statement that applicant will agree not to separately argue the patentability of any dependent claim during any appeal in the application. See form PTO/SB/28.
• (F) The claims must be directed to a single invention. If the USPTO determines that all the claims presented are not directed to a single invention, applicant must make an election without traverse in a telephonic interview. The petition must include a statement that applicant will agree to make an election without traverse in a telephonic interview. See form PTO/SB/28.
• (G) The applicant must be willing to have an interview (including an interview before a first Office action) to discuss the prior art and any potential rejections or objections with the intention of clarifying and possibly resolving all issues with respect to patentability at that time. The petition must include a statement that applicant will agree to have such an interview when requested by the examiner. See form PTO/SB/28.
• (H) At the time of filing, applicant must provide a statement that a preexamination search was conducted, including an identification of the field of search by group/subgroup of the Cooperative Patent Classification for utility applications or class/subclass of the U.S. Patent Classification for design applications and the date of the search, where applicable. For database searches, applicant must provide the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search.
  • (1) This preexamination search must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant can justify with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes such a justification with this statement.
  • (2) This preexamination search must be directed to the claimed invention and encompass all of the features of the claims, giving the claims the broadest reasonable interpretation.
  • (3) The preexamination search must also encompass the disclosed features that may be claimed. An amendment to the claims (including any new claim) that is not encompassed by the preexamination search or an updated accelerated examination support document (see item I) will be treated as not fully responsive and will not be entered. See subsection IV below for more information.
  • (4) A search report from a foreign patent office will not satisfy this preexamination search requirement unless the search report satisfies the requirements for a preexamination search.
  • (5) Any statement in support of a petition to make special must be based on a good faith belief that the preexamination search was conducted in compliance with these requirements. See 37 CFR 1.56 and 11.18.
• (I) At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
  • (1) An accelerated examination support document must include an information disclosure statement (IDS) in compliance with 37 CFR 1.98 citing each reference deemed most closely related to the subject matter of each of the claims.
  • (2) For each reference cited, the accelerated examination support document must include an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference.
  • (3) The accelerated examination support document must include a detailed explanation of how each of the claims are patentable over the references cited with the particularity required by 37 CFR 1.111(b) and (c).
  • (4) The accelerated examination support document must include a concise statement of the utility of the invention as defined in each of the independent claims (unless the application is a design application).
  • (5) The accelerated examination support document must include a showing of where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in the written description of the specification. If applicable, the showing must also identify:
    • (i) each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6; and
    • (ii) the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of the claims finds support under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 in each such application in which such support exists.
  • (6)
    • (i) For an application that is subject to examination under AIA 35 U.S.C. 102 and 103 (see MPEP § 2159et seq. to determine if an application is subject to the first inventor to file (FITF) provisions of the AIA), the accelerated examination support document must identify any cited references that disclose subject matter that may be excepted as prior art under 35 U.S.C. 102(b)(2)(C).
    • (ii) For an application that is subject to examination under the pre-AIA (first to invent (FTI)) 35 U.S.C. 102 and 103, the accelerated examination support document must identify any cited references that may be disqualified as prior art under pre-AIA 35 U.S.C. 103(c) as amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Pub. L. 108-453, 118 Stat. 3596 (2004)).

II. DECISION ON PETITION TO MAKE SPECIAL

Applicant will be notified of the decision by the deciding official. If the application and/or petition does not meet all the requirements set forth in subsection I above for the application to be granted special status (including a determination that the search is deemed to be insufficient), the applicant will be notified of the defects and the application will remain in the status of a new application awaiting action in its regular turn. In those instances in which the petition or accelerated examination support document is defective in one or more requirements, applicant will be given a single opportunity to perfect the petition or accelerated examination support document within a time period of two months. Extensions of time under the provisions of 37 CFR 1.136(a) will be permitted, but filing a petition for an extension of time will result in the application being taken out of the accelerated examination program. This opportunity to perfect a petition does not apply to applications that are not in condition for examination on filing. See subsection VIII.C. below. If the document is satisfactorily corrected in a timely manner, the petition will then be granted, but the final disposition of the application may occur later than twelve months from the filing date of the application. Once a petition has been granted, prosecution will proceed according to the procedure set forth below.

III. THE INITIAL ACTION ON THE APPLICATION BY THE EXAMINER

Once the application is granted special status, the application will be docketed and taken up for action expeditiously (e.g., within two weeks of the granting of special status). If it is determined that all the claims presented are not directed to a single invention, the telephone restriction practice set forth in MPEP § 812.01 will be followed. Applicant must make an election without traverse during the telephonic interview. If applicant refuses to make an election without traverse or the examiner cannot reach the applicant after a reasonable effort, the examiner will treat the first claimed invention (the invention of claim 1) as constructively elected without traverse for examination. Continuing applications (e.g., a divisional application directed to the non-elected inventions) will not automatically be given special status based on papers filed with the petition in the parent application. Each continuing application must on its own meet all requirements for special status.

If the USPTO determines that a possible rejection or other issue must be addressed, the examiner will telephone the applicant to discuss the issue and any possible amendment or submission to resolve such issue. The USPTO will not issue an Office action (other than a notice of allowance) unless either: (A) an interview was conducted but did not result in the application being placed in condition for allowance; or (B) there is a determination that an interview is unlikely to result in the application being placed in condition for allowance. Furthermore, prior to the mailing of any Office action rejecting the claims, the USPTO will conduct a conference to review the rejections set forth in the Office action.

If an Office action other than a notice of allowance is mailed, the Office action will set a shortened statutory period of two (2) months. Extensions of this shortened statutory period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file a reply will result in abandonment of the application. See subsections V and VI for more information on post-allowance and after-final procedures.

IV. REPLY BY APPLICANT

A reply to an Office action must be limited to the rejections, objections, and requirements made. Any amendment that attempts to: (A) add claims which would result in more than three independent claims or more than twenty total claims pending in the application; (B) present claims not encompassed by the preexamination search (see subsection I, item (H) above) or an updated accelerated examination support document (see next paragraph); or (C) present claims that are directed to a nonelected invention or an invention other than previously claimed in the application, will be treated as not fully responsive and will not be entered. See subsection VIII.D. below for more information.

For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document in subsection I, item (I) above, applicant is required to provide an updated accelerated examination support document that encompasses the amended or new claims at the time of filing the amendment. Failure to provide such updated accelerated examination support document at the time of filing the amendment will cause the amendment to be treated as not fully responsive and to not be entered. See subsection VIII.D. below for more information. Any IDS filed with an updated accelerated examination support document must also comply with the requirements of 37 CFR 1.97 and 1.98.

Any reply or other papers must be filed electronically via the USPTO patent electronic filing system so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via the USPTO patent electronic filing system, or the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.

V. POST-ALLOWANCE PROCESSING

The mailing of a notice of allowance is the final disposition for purposes of the twelve-month goal for the accelerated examination program. In response to a notice of allowance, applicant must pay the issue fee within three months from the date of mailing of the Notice of Allowance and Fee(s) Due (form PTOL-85) to avoid abandonment of the application. In order for the application to be expeditiously issued as a patent, the applicant must also: (A) pay the issue fee (and any outstanding fees due) within one month from the mailing date of the form PTOL-85; and (B) not file any post-allowance papers that are not required by the USPTO (e.g., an amendment under 37 CFR 1.312 that was not requested by the USPTO).

VI. AFTER-FINAL AND APPEAL PROCEDURES

The mailing of a final Office action or the filing of a notice of appeal, whichever is earlier, is the final disposition for purposes of the twelve-month goal for the accelerated examination program. Prior to the mailing of a final Office action, the USPTO will conduct a conference to review the rejections set forth in the final Office action (i.e., the type of conference conducted in an application on appeal when the applicant requests a pre-appeal brief conference). In order for the application to be expeditiously forwarded to the Patent Trial and Appeal Board (PTAB) for a decision, applicant must: (A) promptly file the notice of appeal, appeal brief, and appeal fees; and (B) not request a pre-appeal brief conference. A pre-appeal brief conference would not be of value in an application under a final Office action because the examiner will have already conducted such a conference prior to mailing the final Office action. During the appeal process, the application will be treated in accordance with the normal appeal procedures (see MPEP Chapter 1200). The USPTO will continue to treat the application as special under the accelerated examination program after the decision by the PTAB.

Any after-final amendment, affidavit, or other evidence filed under 37 CFR 1.116 or 41.33 must also meet the requirements set forth in subsection IV above. If applicant files a request for continued examination (RCE) under 37 CFR 1.114 with a submission and fee, the submission must meet the reply requirements under 37 CFR 1.111 (see 37 CFR 1.114(c)) and the requirements set forth in subsection IV above. The filing of the RCE is a final disposition for purposes of the twelve-month goal for the accelerated examination program. The application will retain its special status and remain in the accelerated examination program. Thus, the examiner will continue to examine the application in accordance with the procedures set forth in subsection III above and any subsequent replies filed by applicant must meet the requirements of subsection IV above. The goal of the accelerated examination program will then be to reach a final disposition of the application within twelve months from the filing of the RCE.

VII. PROCEEDINGS OUTSIDE THE NORMAL EXAMINATION PROCESS

If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR 1.181, 1.182, or 1.183), the USPTO will treat the application as special under the accelerated examination program before and after such proceedings. During those proceedings, however, the application will not be accelerated. For example, during an interference proceeding, the application will be treated in accordance with the normal interference procedures and will not be treated under the accelerated examination program. Once any one of these proceedings is completed, the USPTO will process the application expeditiously under the accelerated examination program until it reaches final disposition, but that may occur later than twelve months from the filing of the application.

VIII. MORE INFORMATION

A. Eligibility

Any non-reissue utility or design application filed under 35 U.S.C. 111(a) on or after August 25, 2006 is eligible for the accelerated examination program. The following types of filings are not eligible for the accelerated examination program:

• (1) plant applications;
• (2) reissue applications;
• (3) applications entering the national stage from an international application after compliance with 35 U.S.C. 371;
• (4) reexamination proceedings;
• (5) RCEs under 37 CFR 1.114 (unless the application was previously granted special status under the program);
• (6) petitions to make special based on applicant’s health or age (see MPEP § 708.02; and
• (7) petitions to make special based on participation in the PPH pilot program. (see MPEP § 708.02(c)).

Rather than participating in the accelerated examination program, applicants for a design patent may participate in the expedited examination program by filing a request in compliance with the guidelines set forth in MPEP § 1504.30. See 37 CFR 1.155.

B. Form

Applicant should use form PTO/SB/28 for filing a petition to make special, other than those based on applicant’s health or age or the PPH pilot program. The form is available on the USPTO patent electronic filing system and on the USPTO’s website at www.uspto.gov/PatentForms.

C. Conditions for Examination

The application must be in condition for examination at the time of filing. This means the application must include the following:

• (1) Basic filing fee, search fee, and examination fee, under 37 CFR 1.16 (see MPEP § 607 subsection I);
• (2) Application size fee under 37 CFR 1.16(s) (if the specification and drawings exceed 100 sheets of paper) (see MPEP § 607 subsection II);
• (3) An executed inventor’s oath or declaration in compliance with 37 CFR 1.63 or 1.64 for each inventor;
• (4) A specification (in compliance with 37 CFR 1.52) containing a description (37 CFR 1.71) and claims in compliance with 37 CFR 1.75;
• (5) A title and an abstract in compliance with 37 CFR 1.72;
• (6) Drawings in compliance with 37 CFR 1.84;
• (7)
  • • For an application filed prior to July 1, 2022 an electronic submissions of “Sequence Listings” or computer readable forms (CRFs) of “Sequence Listings” in compliance with  37 CFR 1.821(c) or (e);
  • • For an application filed on or after July 1, 2022 an electronic submission of “Sequence Listing XMLs” in compliance with 37 CFR 1.831 through 1.835 submitted either on read-only optical disc(s) in compliance with 37 CFR 1.52(e) or via the USPTO patent electronic filing system in XML format as part of an associated file (if applicable);
  • “Large Tables” submitted in ASCII plain text either on read-only optical disc(s) in compliance with 37 CFR 1.52(e) or via the USPTO patent electronic filing system in compliance with 37 CFR 1.58(c)et seq.,.
• (8) Foreign priority claim under 35 U.S.C. 119(a) - (d) identified in the application data sheet (if applicable);
• (9) Domestic benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) in compliance with 37 CFR 1.78 (e.g., for applications filed on or after September 16, 2012, the specific reference to the prior application must be in an application data sheet and for applications filed prior to September 16, 2012, the specific reference to the prior application must be submitted in the first sentence(s) of the specification or in an application data sheet, and for any benefit claim to a non-English language provisional application, the application must include a statement that (a) an English language translation, and (b) a statement that the translation is accurate, have been filed in the provisional application) (if applicable);
• (10) English language translation under 37 CFR 1.52(d), a statement that the translation is accurate, and the processing fee under 37 CFR 1.17(i) (if the specification is in a non-English language);
• (11) No preliminary amendments present on the filing date of the application; and
• (12) No petition that would delay the processing of the application. For example, for an application filed prior to September 16, 2012, no petition under 37 CFR 1.47 for a non-signing inventor. For an application filed after September 16, 2012, no petition under 37 CFR 1.46(b)(2) to designate a person with sufficient proprietary interest as the applicant or a petition under 37 CFR 1.78 to accept a delayed benefit claim.

Furthermore, if the application is a design application, the application must also comply with the requirements set forth in 37 CFR 1.151, 1.152, 1.153, and 1.154.

The petition to make special will be dismissed if the application omits an item or includes a paper that causes the Office of Patent Application Processing (OPAP) to mail a notice during the formality review (e.g., a notice of incomplete application, notice to file missing parts, notice to file corrected application papers, notice of omitted items, or information notice to applicant). The opportunity to perfect a petition (subsection II above) does not apply to applications that are not in condition for examination on filing.

D. Reply Not Fully Responsive

If a reply to a non-final Office action is not fully responsive, but is a bona fide attempt to advance the application to final action, the examiner may provide two months for applicant to supply the omission or a fully responsive reply. Extensions of this time period under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. Failure to timely file the omission or a fully responsive reply will result in abandonment of the application. If the reply is not a bona fide attempt or if it is a reply to a final Office action, no additional time period will be given. The time period set forth in the previous Office action will continue to run.

E. Withdrawal From Accelerated Examination

There is no provision for “withdrawal” from special status under the accelerated examination program. However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. An applicant may abandon the application that has been granted special status under the accelerated examination program in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program unless the continuing application is filed with a petition to make special under the accelerated examination program. The filing of an RCE under 37 CFR 1.114, however, will not result in an application being withdrawn from special status under the accelerated examination program.

F. The Twelve-Month Goal

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. The twelve-month goal is successfully achieved when one of the following final dispositions occurs:

• (1) the mailing of a notice of allowance;
• (2) the mailing of a final Office action;
• (3) the filing of an RCE; or
• (4) the abandonment of the application.

The final disposition of an application, however, may occur later than the twelve-month time frame in certain situations (e.g., an IDS citing new prior art after the mailing of a first Office action). See subsection VII above for more information on other events that may cause examination to extend beyond this twelve-month time frame. In any event, however, this twelve-month time frame is simply a goal. Any failure to meet the twelve-month goal or other issues relating to this twelve-month goal are neither petitionable nor appealable matters.

IX. FORM PARAGRAPHS

The following form paragraphs may be used for the accelerated examination program:

708.02(b) Prioritized Examination [R-01.2024]

Section 11(h) of the Leahy-Smith America Invents Act provides for prioritized examination whereby applicants may request prioritized examination upon payment of appropriate fees and compliance with certain requirements.

Under prioritized examination, an application will be accorded special status until a final disposition is reached in the application. The goal for handling applications under prioritized examination is to provide, on average, a final disposition within twelve months of prioritized status being granted. Prioritized examination is available at the time of filing an original utility or plant application under 35 U.S.C. 111(a), as set forth in 37 CFR 1.102(e)(1). This is referred to as "Track One" prioritized examination. An "original" application includes a continuing application (i.e., a continuation, continuation-in-part, or divisional application) but does not include reissue applications. In addition, a single request for prioritized examination may be granted for a request for continued examination (RCE) in a plant or utility application, including an application that has entered the national stage under 35 U.S.C. 371, as set forth in 37 CFR 1.102(e)(2). This type of prioritized examination is referred to as "prioritized examination for requests for continued examination" (PE-RCE). The Office maintains a "Quick Start Guide" that illustrates how to file an electronic request for prioritized examination at www.uspto.gov/sites/default/ files/documents/track_ one_quick_start_guide_11-24-2013.pdf.

To maximize the benefit of prioritized examination, applicants should consider one or more of the following: (A) acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest which the applicant believes is patentable in view of the prior art to the narrowest which the applicant is willing to accept; (B) submitting an application in condition for examination; (C) filing replies that are completely responsive to an Office action and within the shortened statutory period for reply set in the Office action; and (D) being prepared to conduct interviews with the examiner. The phrase “in condition for examination” in this context means the same as it does with respect to the current accelerated examination program, which is discussed in MPEP § 708.02(a), subsection VIII.C.

Until further notice, the Office will accept no more than 15,000 requests for prioritized examination in any fiscal year. Statistical findings about prioritized examination, including statistics concerning the Office’s ability to meet its stated goals for the program are available to the public on the Office’s Internet website at www.uspto.gov/patents/ init_events/Track_One.jsp.

I. REQUIREMENTS FOR REQUESTING PRIORITIZED EXAMINATION

The requirements for requesting prioritized examination are set forth below. A request must meet the general requirements specified in subsection I.A. below, and also meet the specific requirements for either subsection I.B. (for a newly filed application) or subsection I.C. (for a request for continued examination).

A. General Requirements

1. Type of Application

The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application). The procedure for prioritized examination does not apply to design applications, reissue applications, provisional applications, or reexamination proceedings. The procedure for prioritized examination does not apply to international applications that have entered the national stage under 35 U.S.C. 371, except that such an application may undergo prioritized examination if an RCE is filed (see I.C. below). A continuing application will not automatically be given prioritized examination status based on a request filed in the parent application; each application (including each continuing application) must, on its own, meet all requirements for prioritized examination under 37 CFR 1.102(e). A utility or plant nonprovisional application filed under 35 U.S.C. 111(a) may claim priority to a foreign application under 35 U.S.C. 119(a) - (d) or (f) and remain eligible for prioritized examination.

2. Fees

Upon filing the request for prioritized examination, the following fees must be paid for the application:

• (A) the prioritized examination fee set forth in 37 CFR 1.17(c),
• (B) the processing fee set forth in 37 CFR 1.17(i)(1),
• (C) the publication fee set forth in 37 CFR 1.18(d),
• (D) the basic filing fee set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c),
• (E) the search fee set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m), and
• (F) the examination fee set forth in 37 CFR 1.16(o).

Small entity and micro entity fee reductions are available for many of the above fees; see the current fees at www.uspto.gov/Fees. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee. If any fee is unpaid at the time of filing of the application, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

3. Claims

The application must contain, or be amended to contain, no more than four independent claims and no more than thirty total claims. In addition, the application must not contain any multiple dependent claims. After prioritized examination has been granted in an application, an amendment that results in more than four independent claims or thirty total claims, or a multiple dependent claim, will result in termination of prioritized examination.

4. Yearly Limit

The request for prioritized examination may be accepted if the requirements under 37 CFR 1.102(e) are satisfied and the limit for the number of requests for the year has not been reached. The number of granted requests for prioritized examination under 37 CFR 1.102(e) is limited to a maximum of 15,000 per fiscal year. The Office posts statistics, including the number of granted prioritized examination requests, on its website at www.uspto.gov/ aia_implementation/patents.jsp. In addition, the Office will post a message in the USPTO patent electronic filing system if/when the number of granted requests is close to the limit. If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in the USPTO patent electronic filing system.

5. Additional Requirements

Additional requirements must be met depending on whether prioritized examination is requested upon filing of a new application (Track One), see subsection I.B. or incident to filing a request for continued examination (PE-RCE), see subsection I.C.

It is strongly recommended that applicants use the Office’s certification and request form PTO/AIA/424 to request prioritized examination, but the form is not required. The form is available through USPTO patent electronic filing system and on the Office’s Internet website at www.uspto.gov/PatentForms. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.

Any item submitted on the same day the request for prioritized examination is filed will be considered to have been filed with the request under 37 CFR 1.102(e).

B. Prioritized Examination for Application Filings under 35 U.S.C. 111(a) (Track One)

A newly filed patent application may be granted Track One prioritized examination status if it meets the general conditions in subsection I.A. above, and the additional following conditions:

1. Type of Application

The application must be a utility or plant nonprovisional application, including a continuing application (i.e., a continuation, continuation-in-part, or divisional application), filed under 35 U.S.C. 111(a) on or after September 26, 2011. The application must be filed via the USPTO patent electronic filing system if it is a utility application. Plant applications must be filed in paper. Due to the need to limit the number of applications in the prioritized examination program in its initial stages, applications entering the national stage under 35 U.S.C. 371 are not eligible at the time of entry; see subsection I.C. below for prioritized examination of national stage entries under 35 U.S.C. 371 in which as RCE has been filed. However, an applicant who has filed an international application may participate in the prioritized examination program by filing a by-pass continuation; i.e., a new application filed in the United States under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365(c), rather than entering the national stage under 35 U.S.C. 371. In such a case, it is not necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application; however, a translation is required in accordance with 37 CFR 1.52(b)(1).

2. Disclosure and Inventor’s Oath or Declaration

A proper request for prioritized examination must include, on filing, a specification as prescribed by 35 U.S.C. 112 including at least one claim, and a drawing when necessary. The application must be filed with an executed application data sheet meeting the conditions specified in 1.53(f)(3)(i), or with the inventor’s oath or declaration (under 37 CFR 1.63 and 1.64) executed for each inventor. Such an application data sheet must include the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor. Note that filing an application without the inventor’s oath or declaration requires payment of the surcharge set forth in 37 CFR 1.16(f).

3. Claims

The application must contain no more than four independent claims and no more than thirty total claims. If, at the time the request for prioritized examination is considered by the USPTO, the application does not meet this requirement, applicant will be notified of the deficiency through a decision on the request, which will provide one month for applicant to amend the claims consistent with the requirements for prioritized examination. In order to reduce Office processing and ensure that patent application publications are printed correctly, the Office strongly encourages applicants to file applications without any preliminary amendments.

4. Fees

The application must be filed with the basic filing fee, the search fee, and the examination fee. If applicable, any excess claims fees due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h), and any excess claim fee due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i), and any application size fee due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s), must be paid before Track One status will be granted. If, at the time the request for prioritized examination is considered by the USPTO, any of these three fees are required but have not been paid, applicant will be notified of the deficiency through a decision on the request. These three fees must be paid not later than one month from a first decision on the request for prioritized examination.

A nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) may be submitted together with a request for prioritized examination. However, the publication fee set forth in 37 CFR 1.18(d) still must be paid upon request for prioritized examination. If the application is not published, a refund of the publication fee may be requested as provided in subsection III below and in MPEP § 1126.

Color drawings may be filed with new nonprovisional utility patent applications under 35 U.S.C. 111(a) and in U.S. national stage applications under 35 U.S.C. 371 applications through Patent Center; see MPEP § 502.05, subsection VIII. See also the Legal Framework for Patent Electronic System ((www.uspto.gov/PatentLegalFramework) (October 2019)). A petition is still required for entry of color drawings; see MPEP § 608.02 subsection VIII.

If applicant discovers that a required item has been inadvertently omitted from the application filing, a follow-on submission may be filed, but only if the follow-on submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if an inventor’s oath or declaration or the filing fees are inadvertently omitted when the application is filed via the USPTO patent electronic filing system, then applicant may submit the inventor’s oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application. Applicants are also reminded that only registered users of the USPTO patent electronic filing system can submit follow-on documents via the USPTO patent electronic filing system and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of the USPTO patent electronic filing system to submit such a follow-on document on the same day the application was filed. See also MPEP § 502.05, subsection III. D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically.

Applicants may receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52) which will delay a decision on the request for prioritized examination; however, the request for prioritized examination may still be granted if the request is otherwise compliant with 37 CFR 1.102(e)(1). Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice. Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination program. A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.

If the request for prioritized examination is dismissed, applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Applicant may not refile a request for Track One prioritized examination in order to correct a deficiency in the request because a proper request for Track One prioritized examination (i.e., for prioritized examination of a newly-filed utility or plant application under 35 U.S.C. 111(a) and not for an RCE) requires that the request be included upon filing.

C. Prioritized Examination of an Application for a Request for Continued Examination (PE-RCE)

A pending patent application in which a request for continued examination has been filed may be granted PE-RCE prioritized examination status under the following conditions:

1. Type of Application

The application must be a non-reissue utility or plant nonprovisional application filed under 35 U.S.C. 111(a), or that has entered the national stage under 35 U.S.C. 371.

2. Fees

The publication fee set forth in 37 CFR 1.18(d) must be paid for the application, either previously or with the request for prioritized examination. Note that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee.

3. Timing of the Request

The PE-RCE request may be filed concurrently with, or subsequently to, the filing of a request for continued examination (RCE). However, the PE-RCE request must be filed before the mailing of the first Office action after the filing of the RCE. The conditions for filing an RCE are set forth in 37 CFR 1.114. Prosecution must be closed; i.e., the application is under appeal, the last Office action is a final action (37 CFR 1.113), a notice of allowance has been issued (37 CFR 1.311), or there has been an action that otherwise closes prosecution in the application. Any request for prioritized examination of an application in which there has been a request for continued examination is premised on the existence of a properly filed RCE. Prioritized examination will not be granted in an application where the RCE does not meet the requirements of 37 CFR 1.114.

4. Number of Requests

Only a single such request for prioritized examination for a request for continued examination may be granted in an application. The prioritized examination program permits a single request to be granted under 37 CFR 1.102(e)(1) upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted under 37 CFR 1.102(e)(2) upon filing a request for continued examination under 37 CFR 1.114.

Applicant may file a petition under 37 CFR 1.181 if applicant believes a decision dismissing a PE-RCE request is not proper. Applicant should review the reason(s) stated in the decision dismissing the PE-RCE request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Alternatively, applicant may choose to correct the deficiencies in the PE-RCE request by filing a new PE-RCE request for that same RCE. The new PE-RCE request must include any required fees and be timely; i.e., it must be filed prior to the mailing of a first Office action after the filing of the RCE.

II. PROSECUTION OF AN APPLICATION UNDER PRIORITIZED EXAMINATION

The time periods set for reply in Office actions for applications undergoing prioritized examination will be the same as set forth in MPEP § 710.02(b). Where, however, an applicant files a petition for an extension of time to file a reply or files a request for suspension of action, the petition or request will be acted upon, but the prioritized examination of the application will be terminated. In addition, filing an amendment to the application which results in more than four independent claims, more than thirty total claims, or a multiple dependent claim will terminate the prioritized examination. Upon termination of prioritized examination, the application will be removed from the examiner’s special docket and placed on the examiner’s regular docket in accordance with its stage of prosecution.

The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted. The final disposition for the twelve-month goal means that within twelve months from the date prioritized status has been granted that one of the following occur: (A) mailing of a notice of allowance; (B) mailing of a final Office action; (C) filing of a notice of appeal; (D) completion of examination as defined in 37 CFR 41.102; (E) filing of a request for continued examination; or (F) abandonment of the application. An application under prioritized examination, therefore, would not be accorded special status during appeal or interference before the Patent Trial and Appeal Board (PTAB), or after the filing of a request for continued examination. As noted above, the submission of an amendment resulting in more than four independent claims or more than thirty total claims is not prohibited, but simply terminates the prioritized examination. Thus, upon mailing of a final rejection (at which point prioritized examination is terminated), applicants may amend the claims to place them in independent form where dependent claims were found allowable, or add new claims, subject only to the limitations applicable to any application under final rejection. See 37 CFR 1.116. Similarly, upon mailing of a notice of allowance, applicants may submit amendments to the claims, again subject only to the limitations applicable to any application that has been allowed. See 37 CFR 1.312. A patent that issues will not contain any indication on its face that it was processed via prioritized examination.

III. REFUND OF FEES

If a request for prioritized examination is dismissed, the prioritized examination fee set forth in 37 CFR 1.17(c) will be refunded. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The processing fee set forth in 37 CFR 1.17(i) will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP § 1126 if the application is not published under 35 U.S.C. 122(b).

As the termination of prioritized examination does not cause the prioritized examination fee to have been paid by mistake or in an amount in excess of that required, the termination of prioritized examination will not entitle the applicant to a refund of the prioritized examination fee. See 35 U.S.C. 42(d) and 37 CFR 1.26(a).

708.02(c) Patent Prosecution Highway Program [R-07.2015]

The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating patent offices. Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

The USPTO participates in the Global PPH and IP5 PPH pilot programs, and also has PPH agreements with several intellectual property offices that are not yet included in the Global PPH. See www.uspto.gov/patents/init_events/pph/index.jsp for details and forms to request participation in, and to petition to make an application special under, the PPH program.