In today’s Federal Register Notice, the USPTO announces the expansion of its Track I program for fee-based expedited examination to include Requests for Continued Examination (RCEs). While this may be good news on a practical level, it exacts a high price to obtain prompt review of an application that already is midstream in the examination process. The change takes effect immediately, and applies to RCEs filed before, on, or after December 19, 2011.

Track I For RCEs

According to the Federal Register Notice, an RCE application may be granted prioritized examination status if the following conditions are met:

  1. The RCE is filed in an original (non-reissue) utility or plant nonprovisional application filed under 35 USC § 111(a) or entered into the national stage under 35 USC § 371.
  2. The Request for Prioritized Examination is filed via EFS-Web (except in a plant application) before a post-RCE Office Action is issued. The Request for Prioritized Examination may be filed concurrently with or subsequently to the filing of the RCE.
  3. The application must contain or be amended to contain no more than 4 independent claims and no more than 30 total claims at the time the Request for Prioritized Examination is filed, and the application must not contain any multiple dependent claims.
  4. The Request for Prioritized Examination must be accompanied by the prioritized examination fee set forth in 37 CFR § 1.17(c) (currently $4800/$2400), the processing fee set forth in 37 CFR § 1.17(i) (currently $130), and if not previously paid, the publication fee set forth in 37 CFR § 1.18(d).
  5. Only one Request for Prioritized Examination of an RCE can be filed in a given application.

The USPTO suggests that applicants use the certification and request form PTO/SB/424 available on EFS-Web.

The Track I requirements for an RCE differ from those for a new application (e.g., for “initial examination”) in at least two significant respects. First, an RCE in a U.S. national stage application is eligible for this program, while such applications are not eligible for the basic Track I program. Second, a Request for Prioritized Examination can be filed after an RCE has been filed, while for the basic Track I program a Request for Prioritized Examination must be filed at the same time as the application itself.

The Track I program for RCEs itself is similar to the basic Track I program. Most importantly, the USPTO goal for all Track I applications is to provide (on average) a final disposition within twelve months of prioritized status being granted. For this goal, “final disposition” includes:

  • a notice of allowance
  • a final Office action
  • a notice of appeal
  • a declaration of interference
  • a request for continued examination
  • abandonment

Like the basic Track I program, an RCE accorded special status under this program will not be accorded special status on appeal. Also like the basic Track I program, an application will lose its special status if claim amendments result in more than four independent claims, more than thirty total claims, or any multiple dependent claims.

The Federal Register Notice states that only a single Request for Prioritized Examination of an RCE can be filed in a given application, and this requirement is set forth in new 37 CFR § 1.102(e)(2). Although not expressly stated, it appears that the same application could be granted special status for initial examination and also granted special status once as an RCE.

 Reaching The 10,000 Limit

The Federal Register Notice points out that Track I requests for RCEs will count towards the 10,000 annual limit the America Invents Act places on requests for prioritized examination. Although fewer than 1,000 Track I requests have been filed in the fiscal year that began on October 1, 2011, this new program could dramatically increase the rate and number of Track I requests.

An Indulgence To Get Out Of Purgatory?

I remember learning in my high school European history class that before the Reformation, the Catholic Church collected money by charging fees (“indulgences“) to shorten a person’s time in purgatory. I’m not sure how historically or doctrinally correct my recollection is, but I can’t help but think of it as I study this program. I have written previously about how changes to internal USPTO procedures made in late 2009 have significantly delayed examination of RCEs, and I lamented the number of my applications that are “languishing in post-RCE purgatory.” Now the USPTO is offering a way out, but does the “punishment” fit the “sin,” or is the USPTO abusing its authority in order to line its coffers?