In 2010, the United States Patent and Trademark Office (USPTO)
proposed the implementation of certain procedures designed to give
patent applicants more control over the timing of the examination
of original plant and utility patent applications. Specifically,
the USPTO proposed a threetrack system whereby applicants could
request prioritized examination (Track I), request a delay in the
docketing of an application (Track III) or obtain processing under
the current examination procedure (Track II) by not requesting
Track I or Track III. The USPTO is still considering and revising
the Track III delayed procedure. However, the USPTO intends to
implement the Track I procedures immediately.
Accordingly, on or after May 4, 2011, a request for prioritized
examination may be submitted with any original utility or plant
application. A patent application may be granted prioritized
examination status upon satisfaction of the following
The application must be a new original utility or plant
non-provisional application. The procedure does not apply to
international applications, design applications, reissue
applications, provisional applications and reexamination
applications. Prioritized examination of continuing applications
(i.e., a continuation or a divisional application) may be
requested, provided that each individual continuing application for
which the request is made meets the requirements.
The application must be complete including the payment of all
applicable fees (basic filing fee, the search fee, the examination
fee, any excess claims fees and any application size fee). If it is
a utility application, it must be filed via the USPTO's
electronic filing system.
The application must contain no more than four independent
claims and no more than thirty total claims. The application cannot
contain multiple dependent claims.
The application must be accompanied by the prioritized
examination fee, the processing fee and the publication fee. The
prioritized examination fee has been set at $4000 for all entity
sizes. Legislative approval is being sought to eventually halve
that fee for small entities.
The request will only be accepted if the number of requests for
the given year has not exceeded the maximum permitted amount. The
USPTO has set the maximum number at 10,000 applications for
The USPTO advises that a prioritized application will be
accorded special status and will be placed on the examiner's
special docket throughout the course of its prosecution. The goal
of the USPTO is to reach a final acceptance or rejection of a
prioritized application within 12 months of prioritized status
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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