Patent applicants will soon be able to “prioritize” their applications by paying an additional fee to U.S. Patent and Trademark Office (USPTO). Beginning May 4, for an additional $4,000, the USPTO will aim to provide a final disposition of the patent application within twelve months. Companies who desire patent protection as soon as possible should consider which applications, if any, they would like to enter into the program.

The 12 month goal represents a significant improvement over the current average pendancy of 34 months. The program, announced in a Final Rule published April 4, is available to any original utility or plant nonprovisional application filed on or after May 4, 2011. The USPTO has set an initial limit of 10,000 applications to be prioritized during the remainder of fiscal year 2011, so companies seeking the benefits of this program may want to get their applications on file as soon as possible. The USPTO will revisit this limit at the end of fiscal 2011 to evaluate what the appropriate maximum should be for future years.

While it is unclear how quickly prioritized applications will issue, the prioritization process will likely result in patent issuance much sooner than normal. This will allow patentees to begin enforcing or licensing their technology sooner, and may also provide an earlier indication to investors of the technology’s potential value. In considering whether to take advantage of prioritized examination, a potential participant should be aware that prioritized examination may be terminated based on certain actions by the applicant. For example, a patent applicant will be required to limit their total number of claims and respond promptly to patent office communications. Prioritized examination will also be terminated if the applicant files a petition for an extension of time to file a reply, or files an amendment to the application which results in more than four independent claims, more than thirty total claims, or multiple dependent claims.

In addition to understanding the actions that will result in terminating prioritized examination a potential participation should carefully consider whether prioritized examination is appropriate based on their knowledge of the prior art and the condition of the application, such that amendments can be minimized. In addition, applicants should consider whether the volume of their patent portfolio, resources available, and any anticipated time constraints might preclude their ability to prosecute the application with expedience. Lastly, patent applicants will incur the costs of patent prosecution sooner, because examination occurs earlier and on an expedited track. Companies should weigh the benefits of expedited patent protection and potential for faster issuance of a patent against their readiness for a shortened prosecution period and earlier cost outlays.

If you have questions or wish to discuss prioritized examination further, please contact one of the attorneys listed above or another attorney in our Patent Prosecution, Portfolio Strategy, and Management practice group.

Invaluable assistance was provided for this eUpdate by Elen Wetzel.