By Donald Zuhn --
Last week, the U.S. Patent and Trademark Office announced that it would begin accepting requests for prioritized examination of patent applications on May 4, 2011. The program was initially announced as part of the Enhanced Examination Timing Control Initiative (or Three Track program) last June (see "USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative").
In February, the Office indicated that the first phase of the Three Track proposal (i.e., Track 1 examination, which would provide prioritized examination of an application within 12 months of its filing date) would carry a hefty additional fee of $4,000 (see "USPTO Provides More Details Regarding 'Three Track' Examination Proposal"). The Office also indicated that Track 1 applications would be limited to four independent and thirty total claims and would have to be filed electronically via the EFS-Web. Finally, the Office noted that in view of the support for Track 1, it would be proceeding with "immediate implementation" of the prioritized examination track.
In last week's announcement, the Office noted that requests for prioritized examination would be limited to a maximum of 10,000 applications from May 4 to September 30, 2011 (when the Office's fiscal year 2011 ends). The Office also published a notice in the Federal Register (76 Fed. Reg. 18399) providing changes for implementing the Track 1 program. In the notice, the Office states that "[t]he aggregate goal for processing applications under prioritized examination is to provide a final disposition within twelve months of prioritized status being granted."
In addition to the $4,000 fee for requesting priority examination (for which small entities will not at present receive a 50% discount), applicants will still have to pay standard filing fees (including excess claims and application size fees) and processing and publication fees. As the notice explains, large entity applicants can expect to pay a minimum of $5,520 for priority examination ($330 for the basic filing fee, $540 for the search fee, $220 for the examination fee, $4,000 for the prioritized examination fee, $130 for the processing fee, and $300 for the publication fee). The notice also states that if the America Invents Act is enacted, giving the Office more fee-setting authority with respect to priority examination, the priority examination fee will be increased to $4,800 for large entities and decreased to $2,400 for small entities.
While the Office will accord prioritized examination applications special status and place them on the examiner's special docket, the following actions taken by the applicant will terminate prioritized examination:
• Filing a request for continued examination (RCE);
• Filing a petition for an extension of time to file a reply;
• Filing a request for a suspension of action; or
• Filing an amendment that results in more than four independent claims, more than thirty total claims, or a multiple dependent claim.
To participate in the Track I program, applicants have to fulfill the following requirements:
• File a new original utility or plant nonprovisional application under 35 U.S.C. § 111(a) on or after May 4, 2011 (the procedure does not apply to international, design, reissue, or provisional applications, or reexamination proceedings, but can be used for continuing applications);
• File an application that is complete under 37 C.F.R. § 1.51(b), including the oath or declaration, and payment of the filing, search, and examination fees, any applicable excess claims fee, and any applicable application size fee at the time of filing;
• File the application via the Office's electronic filing system (EFS-Web);
• The application cannot contain more than four independent claims and thirty total claims or any multiple dependent claims;
• Request prioritized examination (preferably by using Form PTO/SB/424); and
• 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)).
The remainder of the Federal Register notice provides responses to 24 comments submitted on the Track 1 proposal, and amendments to the Rules of Practice for implementing the program.
The Office indicated last week that Track 3, which would allow an applicant to request a delay of up to 30 months prior to docketing for examination, would likely be implemented by September 30, 2011.
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.
http://www.aminn.org/patent-reform-act-2011-s23
Posted by: patent litigation | April 19, 2011 at 12:00 PM