The USPTO recently announced that the agency will launch it’s new prioritized examination system known as “Track One” on May 4, 2011. Under the program, patent applicants can elect to accelerate examination of their patent applications (if the application meets certain requirements) filed on or after May 4, 2011. The USPTO will then “prioritize” the handling of your patent application with a goal of reaching a final disposition within twelve months. If “accorded special status”, the patent application will be placed on the examiner’s special docket throughout its entire course of prosecution before the examiner until a final disposition is reached. Final Disposition for a twelve month goal means: (1) mailing of a notice of allowance; (2) mailing of a final Office action, (3) filing of a notice of appeal, (4) declaration of an interference by the BPAI, (5) filing of a request for continued examination, or (6) abandonment of the application within 12 months from the date prioritized status has been granted.
To qualify for Track One prioritized status, an applicant must meet certain requirements:
- Application must be a new original utility or plant nonprovisional application;
- Application must be filed on or after May 4, 2011 using the the USPTO’s electronic filing system;
- Application must be “complete”;
- The request for prioritized application must be filed with the application itself;
- Application may contain no more than four independent and thirty total claims; and
- The $4,000 fee must be paid in addition to filing, processing and publication fees ($1,520 for a large entity or $892 for a small entity). Without congressional legislation, the USPTO asserts that it cannot offer a small-entity discount.
In an Intellectual Property Alert published on Tuesday, summarizing the Track One program, Haynes Boone noted that “once granted, Track One status can be lost (without a refund) if the applicant: (1) requests an extension of time to respond to an office action; (2) requests suspension of action (e.g. by filing a Request for Continued Examination); or (3) files an amendment that results in more than 30 total claims, more than 4 independent claims, or a multiple dependent claim. Therefore, to maximize the benefit of Track 1 prioritized examination, applicants should understand the state of the art when filing and submit applications with clear specifications and a well-rounded claim set.”
Courtenay C. Brinckerhoff , Partner with Foley & Lardner and writer for Pharma Patents, suggests several points to consider regarding the Track One program:
- Track I applications will only be prioritized until one of the “final disposition” benchmarks is reached, which includes a final Office Action. Prioritized examination will not carry over once an RCE or Notice of Appeal is filed, and would have to be requested anew for a continuation or divisional application.
- The USPTO has emphasized that the 12-month goal is an “aggregate” goal. The USPTO is not promising to attain this goal for every Track I application, and will not refund any prioritization fees if this goal is not met. The USPTO will publish quarterly statistics on its Track I application processing.
- The USPTO acknowledges that “implementation of the Track I program could have an effect on the examination of non-prioritized applications,” at least for the current fiscal year. The USPTO’s main concern is the impact of “the current budget situation” on its “ability to hire new examiners.”
It will be interesting to see just how many patent applicants will take advantage of the Track One program given the $4,000 fee. PatentlyO recently surveyed readers who handled some aspects of patent prosecution and filing decisions and asked them what percent of their applications they would expedite based upon a $4,000 fee. The percentages were extremely low.
Read the Federal Register notice announcing the implementation of Track One here.
Tags: Prioritized Examination, Prioritized Status, Track One Program, USPTO
The potential end to fee diversion (via the patent reform legislation currently making its way through Congress) certainly came at the right time. It would have been criminal to have allowed Congress to raid the USPTO of the increased revenue that the patent office is likely to earn through Track One of the 3-track system.