Haynes and Boone's Newsroom
How Much Would You Pay for This Lovely Expedited Examination? USPTO Approves Priority Utility and Plant Patent Application Examination
Tanya Faisal, M.D., Jeffrey A. Wolfson
On April 4, 2011, the U.S. Patent and Trademark Office (USPTO) issued a Final Rule implementing the prioritized examination track (“Track I”) of its new examination timing control procedures.1 Under Track I, patent applicants can accelerate examination of certain patent applications that are filed on or after May 4, 2011. Unlike earlier accelerated examination options that required a risky examination support document and were rarely used, Track I involves only: (1) requesting prioritized examination upon filing; and (2) submitting a prioritized examination fee in addition to the typical fees. The effect of Track I prioritized examination is to give prioritized status to the application and place it on the examiner’s special docket throughout its entire prosecution until final disposition, except for a few exceptions noted below. The USPTO goal is to provide applications under Track I a final disposition within twelve months of achieving prioritized status.2
As background, the USPTO introduced its original “3-Track” proposal in June 2010 to promote increased efficiency of patent prosecution and to provide applicants with greater control over when their utility and plant applications would be examined. In its original proposal,3 the USPTO indicated that under the new system an applicant could potentially (1) request expedited examination (Track I); (2) request a delay of up to 30 months in docketing a non-continuing application for examination (Track III); or (3) proceed under current practices (Track II). Although the USPTO is still in the process of reviewing the Track III proposal, this Final Rule implements the Track I priority examination procedures to permit this option now while Track III is further considered. The rule limits Track I requests to 10,000 applications at most during fiscal year 2011 to better ensure that the timing goal of a final disposition within twelve months can be met.
To qualify for Track I prioritized status, the application must be an original utility or plant non-provisional application filed on or after May 4, 2011, the effective date of this Final Rule. Moreover, an applicant needs to satisfy certain requirements, including:
(1) payment of a $4,000 (or possibly $4,800) prioritized examination fee;4
(2) payment of filing, processing, and publication fees ($1,520 for a large entity or $892 for a small entity);
(3) limiting claims to 4 independent claims and 30 total claims, and payment for additional independent/total claims above the 3/20 limit; and
(4) filing a complete application (if it is a utility application, filing must be through the USPTO Electronic Filing System (EFS-WEB)).
Importantly, interested applicants should note that the Track I option is available for continuing applications (i.e., a divisional or continuation application) provided that the continuing application is filed on or after May 4, 2011.
Once granted, Track I 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 I prioritized examination, applicants should understand the state of the art when filing and submit applications with clear specifications and a well-rounded claim set.
For more information regarding the implementation of Track I expedited examination, please call your Haynes and Boone lawyer or refer to the USPTO press release or the Federal Register. You may also view the alert in the PDF linked below.
Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, 76 Fed. Reg. 18,399 (Apr. 4, 2011) (to be codified at 37 C.F.R. § 1.102(e)). 2
“Final disposition” for the purposes of the twelve-month goal means: (1) mailing a notice of allowance; (2) mailing a final Office Action; (3) filing a notice of appeal; (4) declaration of an interference by the Board of Patent Appeals and Interferences (BPAI); (5) filing a request for continued examination; or (6) abandonment of the application. 3
Enhanced Examination Timing Control Initiative; Notice of Public Meeting, 75 Fed. Reg. 31,763 (Jun. 4, 2010). 4
Under the USPTO’s current statutory authority, the USPTO is unable to reduce the prioritized examination fee for small entity applicants. The USPTO indicated in its February 2011 Notice of Proposed Rulemaking that, if given statutory authority to provide reduced fees for small entities, the prioritized examination fees would be $4,800 for large entities and $2,400 for small entities. See
Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, 76 Fed. Reg. 6369 (Feb. 4, 2011).