By Donald Zuhn --
Last week, the U.S. Patent and Trademark Office provided additional details regarding its proposed "Three Track" patent examination initiative. An outline of the Office's Three Track program, or Enhanced Examination Timing Control Initiative, was originally provided in a Federal Register notice (75 Fed. Reg. 31763) published last June (see "USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative"). In that notice, the Office indicated that under the Three Track proposal, applicants would be able to: (1) request "prioritized examination" (Track I examination), (2) request a delay of up to 30 months in the docketing of a non-continuing application (Track III examination), or (3) make neither of these requests and receive the current application processing (Track II examination). That notice also indicated that the fee for Track I examination "would be set at a level to provide the resources necessary to increase the work output of the USPTO so that the aggregate pendency of nonprioritized applications would not increase due to work being done on the prioritized application."
In last week's announcement regarding the Three Track program, the Office noted that the proposed fee for Track I examination, which would provide prioritized examination of an application within 12 months of its filing date, would be $4,000. In addition, the Office noted that Track I applications would be limited to four independent and thirty total claims and would have to be filed electronically via the EFS-Web. During the first year of the program, the Office intends to limit the number of participating applications to 10,000 in order to ensure that it can meet the 12-month examination goal. The Office would also like to offer a 50% discount on the Track I fee to small entities, and noted that the patent reform legislation (S. 23) recently introduced in the Senate (see "Here We Go Again") would allow the Office to set its own fees and thereby extend this discount to small entity applicants.
Additional details regarding the Office's Track I-related proposals were published on Friday in a notice in the Federal Register (76 Fed. Reg. 6369). In this notice, the Office stated that in response to input it received at a public meeting on July 20, 2010 and via more than fifty written comments, the Office was "in the process of refining the 3-Track proposal." However, because "the vast majority of public input was supportive of the Track I portion of the 3-Track proposal," the Office would "proceed with immediate implementation of the Prioritized Examination Track (Track I), providing fast examination for applicants desiring it, upon payment of the applicable fee and compliance with [other] additional requirements." The notice explains that:
Under Track I prioritized examination, an application would be accorded special status and placed on the examiner's special docket throughout its entire course of prosecution before the examiner until a final disposition is reached in the application. The aggregate goal for handling applications under Track I prioritized examination would be to provide a final disposition within twelve months of prioritized status being granted. The final disposition for the 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 Board of Patent Appeals and Interferences (BPAI), (5) filing of a request for continued examination, or (6) abandonment of the application, within twelve months from the date prioritized status has been granted.
To participate in the Track I program, applicants would have to fulfill the following requirements:
• File an original utility or plant nonprovisional application under 35 U.S.C. § 111(a);
• File the application via the Office's electronic filing system (EFS-Web);
• File an application that is complete under 37 C.F.R. § 1.51(b), with the filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee paid at the time of filing;
• Request prioritized examination (preferably by using Form PTO/SB/424);
• Pay the required fees for requesting prioritized examination at the time of filing (i.e., the prioritized examination fee set forth in 37 C.F.R. § 1.17(c), the processing fee set forth in 37 C.F.R. § 1.17(i), and the publication fee set forth in 37 C.F.R. § 1.18(d)); and
• If necessary, amend the application to contain no more than four independent claims and thirty total claims.
In addition, the notice states that "[w]here . . . an applicant files a petition for an extension of time to extend the time period for filing a reply, the prioritized examination of the application will be terminated." Thus, the notice advises that applicants participating in the program should consider:
(1) Acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest to which the applicant believes he is entitled in view of the state of the prior art to the narrowest to which the applicant is willing to accept; (2) submitting an application in condition for examination; (3) filing replies that are completely responsive to the prior Office action and within the shortened statutory period for reply set in the Office action; and (4) being prepared to conduct interviews with the examiner.
The notice also indicates that "the prioritized examination of the application will be terminated if a request for continued examination is filed."
While the notice proposes amending 37 C.F.R. § 1.17(c) to set the fee for filing a request for prioritized examination under § 1.102(e) at $4,000.00, the notice also indicates that:
If legislation is passed providing a fifty percent fee reduction for providing prioritized examination under 37 CFR 1.102(e) for small entities under 35 U.S.C. 41(h)(1) and that the prioritized examination fees be set to recover the estimated cost of the prioritized examination program, the Office would set the prioritized examination fee at $4,800 ($2,400 for small entities), since 27.8 percent of the new serialized utility and plant applications filed in fiscal year 2010 were by small entities.
The notice sets a March 7, 2011 deadline for the submission of comments regarding the Office's Track I-related proposals, which should be should be sent by e-mail to [email protected], or by regular mail addressed to: Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, to the attention of Robert A. Clarke, Deputy Director, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy.
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In part it seems like it would make the patent system work more for those with money and less for small inventors. But, such is life already….maybe it would be better if there was a graduated fee based on entity size?
Posted by: Patent Attorney | February 08, 2011 at 03:19 AM
How many big pharma/biotech company would like to go for Track-I option? Perticularly when most of the time in bringing new NCE or BLA to market goes in clinical trials.
Well I am not sure how many companies will take advantages of this Track-I option. If anyone have an idea please share it.
Posted by: Mayurbhai Sankalia | February 08, 2011 at 09:43 AM
It would appear such examination tracks would work best in a "First to File" system, and would create a mountain of litigation opportunities in a "First to Invent" system. Wonder what the statistics are as they pertain to issued patents challenged by an inventor claiming to be the first to have invented a concept patented by another.
Does the proposed 3-Track examination system state anything in this regard?
Posted by: Dipak | February 08, 2011 at 11:19 AM
"The Office would also like to offer a 50% discount on the Track I fee to small entities, and noted that the patent reform legislation (S. 23) recently introduced in the Senate (see "Here We Go Again") would allow the Office to set its own fees and thereby extend this discount to small entity applicants."
That is rather shrewd to garner support.
Posted by: 6 | February 08, 2011 at 01:35 PM
It is important to put an end to fee diversion before the 3-track plan goes into effect -- otherwise, the legislature will surely siphon off substantial revenue from the hew plan, and it would be criminal to let Congress plunder an even bigger share of the patent office's earnings.
http://www.aminn.org/webcast-aipr-patent-reform-presentation-us-patent-and-trademark-office
Posted by: patent litigation | February 15, 2011 at 12:22 AM