Implementation of Track I of Enhanced Examination Timing Control Initiative by the USPTO Postponed

The United States Patent and Trademark Office has postponed the start date of the Track I prioritized patent examination program. The program was scheduled for implementation on May 4, 2011. The postponement is a result of the current federal budget issues and due to the reduced spending authority in the Full-Year Continuing Appropriations Act, 2011. David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, stated, “Without the resources to hire a sufficient number of examiners to implement Track One, we must postpone the effective date of the program until we are in a position to implement it successfully while ensuring there will be no adverse impact on non-prioritized examination applications.”¹ A new start date for the program will be announced as soon as circumstances permit.

The Track I portion of the Enhanced Examination Timing Control Initiative was planned to take effect on May 4, 2011. The program will be available for any original utility or plant application. The proposed changes to the Code of Federal Regulations were published in the Federal Register on February 4, 2011,² and comments by the public were solicited. On April 4, 2011, the USPTO published the final rule regarding the program.³ The Track I portion provides for expedited examination to be conducted within 12 months for certain patent applications for an additional fee of US $4,000. The current wait time from the filing of a patent application to the first Office Action is 24.5 months.⁴

The original Initiative proposed a three-track system through which an applicant could either (Track I) submit a fee and receive prioritized examination, (Track II) obtain examination under the current procedure or (Track III), for non-continuing applications, request a delay lasting up to 30 months before examination. With the release of the final rule, the USPTO will implement the Track I portion of the Initiative.

The final rule outlines the procedure for obtaining prioritized examination of electronically filed original utility or plant nonprovisional applications filed under 35 U.S.C. § 111(a). For a fee of $4,000, an applicant would obtain prioritized examination of a patent application, with the USPTO’s goal being to reach final disposition of the application within 12 months from the grant of prioritized status. Final disposition under the program is considered to be:

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 (the "BPAI"),

5. Filing of a Request for Continued Examination ("RCE"), or

6. Abandonment of the application.

The program has other limitations and aspects that an applicant should consider before reaching a decision to participate in the program. The program is limited to applications containing no more than four independent claims, no more than 30 total claims, and no multiple dependent claims. An applicant is not prevented from using extensions of time or restricted to a period for reply when in the program; however, the prioritized examination of the application will be terminated if such a petition for extension of time is filed by the applicant. Further, prioritized examination will only be available for applications filed on or after the date of implementation of the program and will not be available for reissue applications.

The USPTO has also stressed that the 12-month goal for final disposition of an application is only just that: a goal. The Office has specifically stated that if a particular application does not meet the 12-month goal, the applicant will not receive a refund of the fee for requesting prioritized examination. Similarly, no refund will be made to an applicant that decides to change the status of an application or to an applicant that has its prioritized status terminated due to the filing of a petition for extension of time, for example.

In the first year of the program, the USPTO will accept only the first 10,000 requests for prioritized applications in order to gain experience with the program.

Practice Tips:

1. Review your patent portfolio to determine if this program can be used to reach your business goals, given the shortened time frame and added cost.

2. If you are planning on filing an application, determine if it is worth waiting until the program is implemented.

3. Possible reasons to use prioritized examination: (i) known infringement, (ii) licensing opportunities and (iii) competitive advantages.

4. Consider the scope of the claims of the patent application at issue. The program terminates upon the filing of an RCE, so the scope of the claims should lend itself to shortened prosecution.

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¹ USPTO Postpones Effective Date of "Track One" Fast-Track Patent Processing, Press Release 11-30, Apr. 27, 2011, available at http://www.uspto.gov/news/pr/2011/11-30.jsp.

² Changes to Implement the Prioritized Examination Track, 76 Fed. Reg. 6,369 (Feb. 4, 2011).

³ Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, 76 Fed. Reg. 18,399 (Apr. 4, 2011).

⁴ See USPTO Data Visualization Center, available at http://www.uspto.gov/dashboards/patents/main.dashxml.