USPTO Eases Requirements for Track I Prioritized Examination

20 March 2014 PharmaPatents Blog

In a Federal Register Notice issued March 5, 2014, the USPTO announced interim rules under the Track I prioritized examination program that ease the formal requirements for obtaining Track I prioritized examination of a new application. The eased requirements apply to all Track I requests filed since September 16, 2012 (even if previously rejected) as long as a first Office Action has not yet been mailed. (Applicants with a rejected request that would be accepted under the interim rules will need to file a request for reconsideration.)

Track I Prioritized Examination

The Track I prioritized examination program offers fee-based expedited examination for new applications and RCEs. (The current Track I fee for a large entity is $4000, plus a processing fee.) The basic goal of the Track I program is to provide a “final disposition” (allowance, final Office Action, appeal, RCE or abandonment) within twelve months of the Track I request for prioritized examination being granted.

The interim rules apply only to the Track I program for new applications. To request Track I prioritized examination for a new application, the request must be filed at the same time the application is filed (and the application must include a specification, at least one claim, and a drawing when necessary), and all documents must be filed electronically (via EFS-Web). The original Track I rules required that all formalities be met at the time of filing, but the new rules will accept a Track I request even if the application is filed …

  • without an executed inventor’s oath/declaration, if an application data sheet (ADS) setting forth the information required by 37 CFR § 1.53(f)(3)(i) is filed
  • without excess claim fees and/or excess size fees (but the filing fee, search fee and examination fee must be paid at the time of filing)
  • with more than four independent claims, thirty total claims, and/or multiple dependent claims, as long as excess/multiply dependent claims are canceled  within one month of a first decision on the request for prioritized examination.

Easing the Formal Requirements to Facilitate Processing

According to the Federal Register Notice, the USPTO has had to dismiss many Track I requests because they were missing an executed inventor’s oath/declaration or excess claim fees and/or size fees, and/or had too many claims or multiply dependent claims. On the other hand:

The Office has determined that the time periods for meeting those requirements when filing a request for Track I prioritized examination could be expanded while maintaining the Office’s ability to timely examine the patent application.

Second Chance for Track I Prioritized Examination

According to the Federal Register Notice, the interim rules apply to “any application filed under 35 USC § 111(a) on or after September 16, 2012, in which a first action has not been mailed.” This phrasing is a bit confusing because a Track I request for a new application must be filed at the same time as the application, but it means that an Applicant with a rejected Track I request that would have been granted or correctable under the interim rules can file a request for reconsideration with the Office of Petitions and obtain Track I prioritized examination as long as:

  1. the application is still pending;
  2. the application contains, or has been amended to contain, no more than four independent claims, no more than thirty total claims, and no multiple dependent claims; and
  3. a first Office action has not been mailed.

What Do You Think?

The USPTO will consider written comments received by May 5, 2014. Comments should be sent

  • by email to AC93.comments@uspto.gov
  • by mail addressed to:
    Mail Stop Comments—Patents
    Commissioner for Patents, P.O. Box
    1450, Alexandria, VA 22313–1450
    Attention: John R. Cottingham, Director, Office of Petitions, Office of the DeputyCommissioner for Patent Examination Policy
  • by email via the Federal eRulemaking Portal

It is nice to see the USPTO ease formality requirements in a manner that won’t interfere with the overall objectives of the Track I program. I would like the USPTO to expand the Track I program to all unexamined applications, such that a Track I request could be filed after an application has been filed, as long as the application still is awaiting examination. Under the current rules, if an applicant wants to expedite examination of an application that already has been filed, a new (continuing) application must be filed with a request for Track I examination. Opening the Track I program to all unexamined applications would eliminate the need for such otherwise unnecessary duplicate filings.

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