Track ONE Special Issue on Priority Review in the United States (IV) - Application of Priority Review in Continuing Application for RCE

The application of Track ONE Priority Examination in Requests for Continued Examination (RCE) demonstrates an important strategic choice in the patent process. In the fast-paced market of innovative products, making good use of these legal tools will enable companies to seize the initiative and shorten the time from application to authorization.

Under what circumstances can a request for prioritized examination be filed when filing an RCE?

• If you wish to file a request for prioritized examination and submit an RCE at the same time, you may do so under the following conditions (pursuant to 37 CFR 1.102(e)(2)):
  • The application is an original nonprovisional utility patent application filed under 35 USC 111(a) or a plant variety patent application, or an application entering the national phase under 35 USC 371
  • The RCE request is submitted at the same time as the priority examination request, or the RCE is submitted first but no document has been issued for the RCE
  • The RCE of this application was not approved for priority examination
  • The application must contain or be amended to contain no more than 4 independent claims, no more than 30 claims in total, and no multiple dependent claims

What fees are required when filing a request for prioritized examination of an RCE? What happens if one of the fees is not paid?

• In order to make a priority examination request for RCE, the following fees must be paid in addition to the fees required for RCE:
  • Priority examination fees, pursuant to 37 CFR 1.17(c)
  • Priority examination processing fee, pursuant to 37 CFR 1.17(i)(1)
  • If not previously paid, the applicable publication fee is pursuant to 37 CFR 1.18(d). Since this fee is currently set at 0, there is no publication fee payable on currently filed requests for prioritized examination for continued examination. The prioritized examination rule still lists the publication fee as a fee payable in the event that this fee changes in the future.
  • If the above fees are not paid when submitting a request for prioritized examination, the request for prioritized examination will be rejected.
  • If explicit authorization is provided in the accompanying application documents for the USPTO to collect any additional required fees directly, these fees will be automatically collected and the request for prioritized examination will not be rejected for nonpayment of fees. Applicants are advised to include in their application a request for the USPTO to collect fees directly to pay any additional fees pursuant to 37 CFR 1.16 and 1.17 to ensure that the request for prioritized examination is not rejected for nonpayment of the required fees.

Is prioritized examination available in an RCE of a national phase application filed under 35 USC 371?

• An application entered as a national phase application under 35 USC 371 may be eligible for prioritized examination after the filing of a proper RCE (i.e., the application process is closed).

I have a utility patent application that was granted special status through the Track One program when it was originally filed. If I am now filing an RCE for that application, can I file another request for prioritized examination in the RCE?

• Yes, provided that a request for prioritized examination has not been filed for an RCE in that application. The prioritized examination program allows for a single request to be granted when a new application is filed under 35 USC 111(a) and for a single request to be granted when an RCE is filed under 37 CFR 1.114.

My application previously received special status in the prioritized examination process through an RCE. I am now filing a second RCE for my application. Can I file another request for prioritized examination together with the second RCE?

• No. The Priority Examination Program allows only a single request to be granted in an RCE collaboration under 37 CFR 1.114 in that application.