Until now, there were very few options for expediting or accelerating examination of a patent application and some of the available processes were undesirable from a potential litigation standpoint due to the obligations relating to disclosure of prior art.  However, enactment of the America Invents Act provides a way to prioritize examination of any US utility or plant nonprovisional patent application.  US provisional patent applications, design patent applications, applications entering the national stage under 35 USC §371, reissue applications, and re-examination proceedings may not be prioritized at this time.  By prioritizing an application, the application will be considered “special” and will be placed on the Examiner’s special docket throughout prosecution.  The goal is to provide a Notice of Allowance or Final Office Action to the Applicant in 12 months.  

The US Patent and Trademark Office will only accept 10,000 or less applications for prioritized examination.  As of October 13, 2011, 254 applications for prioritized examination have been filed in FY2012.

The following are the requirements for requesting prioritized examination.  A Request for prioritized examination that is incomplete on the day of submission will be dismissed. 

• the utility patent application must be filed electronically via EFS-Web (plant patent applications must be filed in paper)
• a Certification and Request for Prioritized Examination must be filed – the USPTO provides form PTO/SB/424 for this purpose
• the application must be complete, i.e., an executed Oath/Declaration must be filed at the time of requesting prioritized examination
• the $4,800 prioritized examination fee must be paid
• any fees due at the time of filing the application, i.e., filing, search, examination, excess claim, excess size, processing, and publication fees, must be paid at that time
• no more than 4 independent and 30 total claims, with no multiple independent claims, may be filed with the application 

Prioritized examination will be discontinued on any application in which a Petition for Extension of Time, Notice of Appeal, Request for Suspension of Action, Interference, or Request for Continued Examination is filed or if the claims are amended to have more than 4 independent claims, 30 total claims, or to include multiple dependent language.  Further, the prioritized examination fee will not be refunded.