Free Market Economists Rejoice - Kappos Moves PTO Train to the Fast Track

In an unprecedented move that is sure to please free market economists, Director David Kappos positions the U.S. Patent & Trademark Office ("Patent Office") train solidly on the fast track path for patent examination, thereby allowing patent applicants more control over the timing of their application's examination simply with payment of an increased fee. Last summer, the U.S. Patent & Trademark Office ("Patent Office") proposed a new examination process called "3-Track" that would give applicants three choices in how their application is examined: (I) accelerated examination, (II) normal examination, and (III) delayed examination. Due to the overwhelming support from the patent community for the accelerated track ("Track I"), on April 4, 2011, the Patent Office revised the rules of practice to officially implement Track I, with the changes going into effect on May 4, 2011.  As we previously reported,¹ applicants requesting acceleration will not have to provide a copy of a search report, first office action from a foreign patent office, or a supplemental search from a participating intellectual property granting office, all of which were requirements in the original proposal last summer. The Patent Office has also indicated that acceleration will only be available for the first 10,000 applicants. Additionally, the Patent Office has indicated that they expect to implement Track III by the end of the year.

Track I allows an applicant to pay an additional priority fee of $4,000 (in addition to the required filing fees) in order for its application to be afforded prioritized examination with the goal of reaching a final disposition² within one (1) year from the date of filing.³ The Patent Office has limited the requests for prioritized examination to a maximum of 10,000 applications for the first year in order to gauge the changed workflow. According to the Patent Office, the increased fees will go towards increasing productivity (e.g., hiring more examiners), and therefore, applications currently pending should not be delayed by this initiative. 

Under normal Patent Office procedures, new patent applications are taken up for examination in the order in which they are filed, with an average pendency until the first office action is issued of approximately two and a half years.⁴ As we previously reported,⁵ the Patent Office has already implemented procedures that allow applicants of qualifying "green technologies" to petition for special status without having to pay any additional fees or file an "examination support document."⁶ The new Track I initiative, however, now allows any application to receive expedited examination, with payment of the additional fee, regardless of the application's subject matter.

In order to qualify for this prioritized examination, the application must meet the following requirements:

• Be an original utility or plant nonprovisional application;
   
• Be electronically filed;
   
• Pay the required fees for requesting prioritized examination;⁷ and
   
• Contain no more than four (4) independent claims and no more than thirty (30) total claims.

Additionally, because the applicant must make the request for Track I prioritization and pay the required fees at the time of filing of the application, applicants having applications pending at the time this new initiative is officially enacted will not be able to request prioritization for those applications. With that said, under the new proposal, newly filed continuation, divisional, and continuation-in-part applications that are filed on or after the date of implementation will be eligible for Track I status. Therefore, if an applicant wishes to procure a filing date before implementation of the Track I procedures for an application not yet filed, the applicant may proceed with filing an application prior to implementation, and then file a new continuation application claiming the benefit of their original filing. Similarly, if an application is currently pending and the applicant wishes to expedite that application, on or after May 4, 2011, the applicant may file a continuation application and request expedited status for that application. In each of these cases, the applicant gains the benefit of the earlier priority date at the cost of paying additional filing fees.

As the proposed initiative will be limited to the first 10,000 that apply, it is imperative for applicants to review their portfolio and determine which, if any, applications should be accelerated. Applicants should carefully weigh the initiative's benefits against the requirements noted above--most notably, the claim limitations and increased fees. While it is unclear how many applicants will choose the fast track, one thing is clear; the move effectively allows the market, as opposed to the Patent Office, to decide which inventions will benefit from acceleration. Adam Smith would be proud.

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¹ Kappos Opts for Fast Track Examination over 3-Track – for Now.
² Final disposition 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 Board of Patent Appeals and Interferences, (5) filing of a request for continued examination, or (6) abandonment.
³ See Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, 76 Fed. Reg. 18399-407 (April 4, 2011), located here.
⁴ See Press Release from the Patent Office, located here ("Patent applications are normally taken up for examination in the order that they are filed.").
⁵ Director Kappos Gives Early Holiday Present to Patent Owners of "Green Technology."
⁶ An examination support document ("ESD") is essentially an applicant produced Office Action.  The ESD must include: (a) a statement that a prior art search was done, as well as the fields of search and search logic, (b) a listing of the references deemed most closely related to the pending claims, (c) an identification in each reference where each element of the claim can be found, (d) a detailed explanation pointing out why each independent claim is allowable over the cited art, and (e) a showing where each limitation of each claim is found in the specification of the application.
⁷ The Patent Office is currently requiring a fee of $4,000 for both large and small entities.  The Patent Office is not permitted to discount the fee for small entity applicants without new legislation.  The Patent Office has indicated that if new legislation is passed, the fees will be $4,800 for large entities and $2,400 for small entities.