Prioritized vs Accelerated Examination

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A chart that explains the difference between patent office accelerated examination and prioritized examination. Accelerated examination has been available since about 2006. Prioritized examination has only been available since September 26, 2011, as part of the 2011 America Invents Act.

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ACCELERATED EXAMINATION versus PRIORITIZED EXAMINATION

REQUIREMENT

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

PRIORITIZED EXAMINATION Utility applications (original, continuation, RCE, divisional, and continuation-in-part); Plant applications.       Provisional; Design; Re-examination; Reissue, International (PCT); U.S. National stage entry.

ELIGIBLE TYPES OF PATENT APPLICATIONS:

NON-ELIGIBLE TYPES OF PATENT APPLICATIONS:

      

Provisional; Design; Re-examination; Reissue, International (PCT); U.S. National stage entry; Plant applications.

ALTERNATIVE WHEN ENTERING U.S. NATIONAL STAGE:

PETITION FILING DEADLINE:

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. Must file petition concurrently with the filing of the application. 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 “continuation” application in lieu of U.S. National Stage entry (also informally referred to as a “by-pass application”) is eligible for prioritized examination. Must file petition concurrently with the filing of the application.  A petition for prioritized examination of an RCE application may be filed at any time prior to the first Office Action.

EXCEPTIONS TO THE PETITION FILING DEADLINE:

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. Jerold I. Schneider [email protected] 1 Office Mobile 561-404-4350 561-309-5374

REQUIREMENT

ACCELERATED EXAMINATION  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.  $ 140 Processing Fee.

PRIORITIZED EXAMINATION  None other than payment of fees.

BASES FOR PETITION:

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

 $ 140 processing fee;  $ 40002 prioritized examination fee;

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). 20

No exceptions.

TOTAL CLAIMS (MAXIMUM): INDEPENDENT CLAIMS (MAXIMUM):
2

30

3

4

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. Jerold I. Schneider [email protected] 2 Office Mobile 561-404-4350 561-309-5374

REQUIREMENT

ACCELERATED EXAMINATION

PRIORITIZED EXAMINATION

MULTIPLE INDEPENDENT CLAIMS: APPLICATION FILING REQUIREMENTS

Not Permitted.

Not Permitted.

 Application must be complete when filed including oath/declaration and fees;  Preliminary amendment not permitted. Required and must accompany Petition for Accelerated Examination except when petition based on:  Age of the inventor (over 65);  Deteriorating health of the inventor;  Participation in the Patent Prosecution Highway (PPH).  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

 Application must be complete when filed including oath/declaration and fees;  Preliminary amendment is permitted but disfavored. Not required.

PRIOR ART SEARCH / INFORMATION DISCLOSURE STATEMENT (IDS) :

ADDITIONAL REQUIREMENTS OF PETITION:

None.

Jerold I. Schneider [email protected] 3

Office Mobile

561-404-4350 561-309-5374

REQUIREMENT

ACCELERATED EXAMINATION in claims; n.b. These additional requirements do not apply to Petitions based on:  Age of the inventor (over 65);  Deteriorating health of the inventor;  Participation in the Patent Prosecution Highway (PPH).

PRIORITIZED EXAMINATION

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:

Traversal does not result in  Must agree in advance to termination of prioritized elect, without traverse, in examination status. response to a telephone restriction requirement from the Examiner;  If Examiner cannot reach attorney, automatic election of the first invention in the claims. Must agree in advance to have interview, at Examiner’s request, to discuss prior art and potential or actual rejections. No interview requirement.

EXAMINER INTERVIEW:

Jerold I. Schneider [email protected] 4

Office Mobile

561-404-4350 561-309-5374

REQUIREMENT

ACCELERATED EXAMINATION (Telephone interview permitted.)  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. May not withdraw application from accelerated status. Must file continuation application and expressly abandon prior application.  Filing RCE does not result in withdrawal from accelerated examination;  RCE maintains accelerated examination status.

PRIORITIZED EXAMINATION

CONTINUATION AND DIVISIONAL PATENT APPLICATIONS:

 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. Automatic withdrawal from prioritized status upon filing RCE and/or extension of time to respond to Office Action.  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; Office Mobile 561-404-4350 561-309-5374

WITHDRAWAL (CHANGE OF STATUS)

RCE – REQUEST FOR CONTINUED EXAMINATION:

Jerold I. Schneider [email protected] 5

REQUIREMENT

ACCELERATED EXAMINATION

PRIORITIZED EXAMINATION  If an application has been granted prioritized examination, only one RCE will be eligible for prioritized examination.  No prioritized procedure after final rejection;  No prioritized procedure after Notice of Allowance.

CONCLUSION OF EXAMINATION PROCEEDINGS:

 No accelerated procedure after final rejection;  No accelerated procedure after Notice of Allowance.

Jerold I. Schneider [email protected] 6

Office Mobile

561-404-4350 561-309-5374

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