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The America Invents Act (AIA)

One of the (potentially) most useful aspects of the AIA is already effective. It is Prioritized Examination (Track 1).

For $4,000 ($2,000 for small entities), and without any prior art search or analysis, a request can be filed in the USPTO together with filing a new patent application. The early experience is that examination will take place in weeks to months, not years. And, because of the concentrated effort, a relatively high percentage of applications are being allowed. Although this procedure is relatively new, a high percentage of Tracks applications have been allowed and the pendency time is greatly reduced.

As more patent applications are processed under Track 1, the timing may lengthen somewhat, but the strong goal of the USPTO is to have such patent applications allowed or finally rejected within one year.

If a company’s investment hinges on grant of a patent, Track 1 may be a key to getting a business off the ground. On the other hand, if moving forward with the invention or product depends upon continued R&D over time, there may be no good reason to invoke Track 1 and incur the additional early expense.

The conditions for potentially having a patent application proceed in the USPTO under Track 1 are:

1. File a complete new utility patent application with no more than 30 claims (four independent).

2. File a request with the required fee.

3. The total for this special filing is $5,600 ($2,800 for small entity no more than 500 employees). This includes the application filing fees, the request fee, and other USPTO special fees for Track 1.

4. International applications are not eligible, but if filed as a by-pass continuation under 35 U.S.C. 111(a), they are eligible.