The AIA made certain changes to existing patent examination procedures. These changes included the creation of a prioritized examination procedure, which supplemented the existing accelerated examination procedure. The AIA also created a supplemental examination procedure, which seemed to offer patent owners the ability to “purge” certain types of inequitable conduct claims.
The AIA included other changes to examination procedures that will be discussed in this blog posting as well.
One change to patent examination procedures brought about by the AIA was the development of a prioritized examination procedure that allows applicants to pay a fee of $4,800 to have his or her patent application disposed of within one year. Small entities are entitled to a 50% reduction of the fee. The program is limited to 10,000 applications per year. Prior to the enactment of the AIA, the USPTO developed an accelerated examination program that was similar to the prioritized examination program. The accelerated examination program was not eliminated with the passage of the AIA, so the two programs co-exist.
The AIA created a supplemental examination program. Supplemental examination is a procedure that provides patent owners with the ability to submit prior art that was not considered by the examiner during the initial examination process. The filing for supplemental examination can trigger an ex-parte reexamination proceeding, which can be used by patent owners to have the USPTO resolve potential inequitable-conduct issues outside of litigation.
Other Changes to Patent Examination Procedures
The AIA expanded the ability of third parties to “protest” the filing of an application by filing purported prior references (i.e., patents, patent applications and printed publications) for consideration by an examiner. The AIA also eliminated the ability to obtain certain business-method patents directed to tax-avoidance strategies. The AIA also allowed certain applicants to claim “microentity” status to obtain a further reduction in certain filing fees.