See my post earlier today for the details of how to go about requesting prioritized examination of patent applications at the US Patent and Trademark Office.
Several things to note:
First, the PTO is not promising to issue a prioritized application faster, but its expecting completing examination in 12 months. The PTO will only be placing the application on the examiner’s “special new” docket. This means only that it should be taken up for examination earlier than it would have otherwise been taken up. In the past, having the application being advanced out of turn has not meant significantly faster disposition. Thus, the PTO may have to do more in order to meet its 12 month goal. Although there are several ways it could do this, I expect the PTO to encourage examiners to conduct interviews and look for allowable subject matter. The PTO stated in its discussion of the rules that it expects applicants to be “prepared to conduct” interviews with examiner.
Second, applicants will face a lot of pressure to obtain allowance without filing an appeal or requesting continued examination. The special status will be lost when filing a request for continued examination, and there will be no prioritized treatment during appeal. Applicants may be tempted to accept narrower claims to avoid loosing prioritization.
Third, because both the PTO and the applicants have incentives to reach agreement sooner, I would be surprised if allowance rates are not higher and the number of RCEs and appeals lower. If this turns out to be the case, the accompanying cost savings might at least partially justify the cost of the fee.
Fourth, although I believe that the PTO believes that the additional fee will pay for additional resources, I tend to think that prioritized examination will delay, at least in the short run, examination of non-prioritized applications and RCEs. RCEs are now placed on the special new docket of examiners.
Finally, the number of applications that will be given prioritized treatment at any one time is 10,000. I would be really surprised if that number was reached anytime soon. Although many applications would prefer to have their patent sooner rather than later, I don’t know of many who would pay an extra $4000 for only a chance that might happen. The PTO will likely need to establish a track record of significantly reducing pendency times and increased allowance rates for these applications before significant numbers of applicants chose to take advantage of prioritized examination.
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