US Patent Law Reform - Prioritised Examination

Date: 2011-12-23
Author: Tracey Hendy

We continue in our series of snap-shots of changes to US patent law, as a result of The Leahy-Smith America Invents Act, recently signed by President Obama. We now take a closer look at prioritised examination.

What is prioritised examination?

Prioritised examination is a new and faster examination process which aims to allow applicants, for a fee, to have their patent applications processed within 12 months. Within 12 months, the application should have reached either allowance by the examiner or a final report rejecting the application (which generally occurs with the second adverse examination report).

What is the cost of prioritised examination?

There is a government fee of US$4800 in addition to the usual fees payable on filing. Typically, filing in the US costs the applicant about A$7000 so the fee for prioritised examination amounts to a sizeable increase in the cost of filing. Applicants who meet ‘small entity’ requirements are charged a reduced fee of US$2400 for prioritised examination. There is no further discount for a micro entity (a new subcategory of small entity). More information about small entities and micro entities is available1.

When does it become available?

Prioritised examination is now available.

What other requirements are imposed by the US Patent Office?

Prioritised examination is only available at the time of filing an application and therefore is not available for applications currently in the pipeline (although there may be other fast-tracking mechanisms available). Prioritised examination is currently not available for national phase entry of international applications.

In order to qualify, the application must contain no more than four independent claims and no more than thirty claims in total. If the application is amended during examination to exceed this number of claims then prioritised examination will be terminated.

Tardiness on the part of the applicant prevents the applicant from embarking or continuing with prioritised examination, eg if there are delays in providing the necessary signature documents at filing. Also, if a request for an extension of time is filed during examination then prioritised examination will be terminated.

How well the US Patent Office is able to adhere to this timeframe remains to be seen. If the applicant is tardy, then prioritised examination becomes unavailable but if the US Patent Office is tardy, then we hardly expect that they will hand out refunds. If you wish to invoke and maintain this procedure, we suggest you give us your instructions at least 4-6 weeks in advance of any deadlines.

This article was written by Tracey Hendy, Special Counsel, Melbourne.


  1. Freehills article, ‘US Patent Law Reform: Fee Discounts for Micro Entities’