USPTO to Offer Fee-Based Prioritized Examination (Track I) May 4, 2011

On April 4, 2011, the USPTO announced the implementation of fee-based prioritized examination, also known as “Track I” of its three tracks of examination options proposed in June 2010. See 76 Fed. Reg. 18399. This option will be available for non-reissue applications filed on or after May 4, 2011. While this program may be attractive to applicants seeking prompt examination, the details warrant careful consideration.

The Upfront Costs

Unless and until the USPTO has the authority to offer a reduced fee for small entities, the fee for Track I examination will be $4,000 for all applicants, plus a $130 fee for processing the request for prioritized examination.

If Congress authorizes a reduced fee for small entities, the small entity fee will be $2,400, and the large entity fee will be $4,800. (The $130 processing fee will remain the same for all applicants.)

The Upfront Filing Requirements

Track I will be available for a new, original (that is, non-reissue) utility or plant nonprovisional application filed under 35 USC § 111(a) on or after May 4, 2011.

Track I will not be available to international applications, design applications, reissue applications, provisional applications, or reexamination proceedings.

Track I will not be available to national stage entries, but could be sought by filing a "by-pass continuation" application.

Track I will be available to continuing applications (continuation and divisional applications).

A request for prioritized examination must be filed at the same time the application is filed. The application must be filed as a complete application (no "missing parts"), and all papers must be filed electronically (via EFS-WEB). A certification and request for prioritized examination (Form PTO/SB/424) will be available on EFS-WEB.

Thus, the application must be filed electronically with:

• An inventors' oath or declaration
• The basic filing fee
• The search fee
• The examination fee
• Any excess claims fees
• Any application size fee
• The publication fee

and

• A request for prioritized examination
• The prioritized examination fee (e.g., $4,000)
• The request for prioritized examination processing fee ($130)

The application must contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims.

To make the most out of prioritized examination, the USPTO advises applicants to have a good knowledge of the state of the art before filing their application(s), and to present a complete set of claims (from the broadest to which the applicant believes it is entitled to the narrowest). The USPTO also indicates that applicants should be prepared to conduct interviews, although interviews are not a specific element of the prioritized examination procedures.

The Ongoing Requirements

An application accepted for prioritized examination will be accorded "special" status and placed on the examiner's special docket throughout prosecution until a "final disposition." However, if an extension of time is taken for any response, prioritized examination will be terminated. Also, prioritized status will be lost if the application is amended to include more than four independent claims, more than 30 total claims, or any multiple dependent claims.

Once an application is accepted for prioritized examination, it may be useful to contact the examiner to confirm that the application is accorded “special” status.

The USPTO's Promise for Prioritization

The USPTO's goal for Track I applications is to provide a "final disposition" within 12 months of prioritized status being granted. According to the USPTO, "final disposition" means any of the following:

• A notice of allowance
• A final Office Action
• A notice of appeal
• A declaration of interference
• A request for continued examination
• Abandonment

To manage its Track I workload, the USPTO will accept only up to 10,000 applications into Track I for the remainder of fiscal year 2011.

Points to Consider

• Track I applications will only be prioritized until one of the "final disposition" benchmarks is reached, which includes a final Office Action. Prioritized examination will not carry over once an RCE or Notice of Appeal is filed, and would have to be requested anew for a continuation or divisional application.
• The USPTO has emphasized that the 12-month goal is an "aggregate" goal. The USPTO is not promising to attain this goal for every Track I application, and will not refund any prioritization fees if this goal is not met. The USPTO will publish quarterly statistics on its Track I application processing.
• The USPTO acknowledges that "implementation of the Track I program could have an effect on the examination of non-prioritized applications," at least for the current fiscal year. The USPTO's main concern is the impact of "the current budget situation" on its "ability to hire new examiners."

Track I May Often Be Better Than the Alternatives

It is likely that many applicants will be eager to take advantage of Track I. Because qualifying for Track I appears to be straightforward, Track I applicants should not suffer the delays associated with obtaining approval of a Request for Accelerated Examination or a Patent Prosecution Highway (PPH) Request. More significantly, Track I applicants will not have to undertake the search and analysis required for Accelerated Examination, and will not have to limit their claims to those allowed by another patent office, as they do for the PPH.

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:

Courtenay C. Brinckerhoff
Vice Chair, Chemical, Biotechnology & Pharmaceutical Practice
Washington, D.C.
202.295.4094
cbrinckerhoff@foley.com