Prioritizing Your Patent Application

An expedited procedure for examining U.S. patent applications, called Prioritized Examination, or “PE,” has been implemented by the America Invents Act, which was signed into law by President Obama in September 2011.

The goal of PE is for qualified U.S. patent applications to reach final disposition within 12 months. This represents an inexpensive alternative to the regular patent prosecution route, which on average takes about three years to disposition.

Those who are in industries where products have a short shelf life, who trade patent rights for investment or licensing opportunities, and/or regard patents as an important defensive tool, have a strong incentive to use this procedure. The PE procedure also may allow U.S. patentees to accelerate patent examination in certain foreign countries.

A patent application filed on or after September 26, 2011, may be granted PE status subject to the following requirements: It must be a non-provisional application for an original U.S. utility or plant patent filed via the USPTO’s electronic filing system, and the application as filed must contain no more than four independent claims and no more than 30 total claims. In addition, it must not include any multiple dependent claims. An international application being entered into the United States as a “bypass” continuation application also may be eligible.

To maximize the benefits of PE, companies should review their patent portfolios as soon as possible to identify pending applications that call for expedited examination.