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USPTO’s new fast track examination provides opportunity for early patent issuance

Companies should be proactive and use the Track I Prioritized Examination Program to take advantage of shorter patent determination wait times

Utilizing traditional filing procedures, an applicant for a U.S. patent can expect to wait on average more than three years after the filing of a patent application to receive a final determination on patentability from the U.S. Patent & Trademark Office (USPTO). That is a long time to wait for a “thumbs up” or a “thumbs down” from the USPTO in the form of either a notice of allowance or an appealable final rejection. This delay can cause discomfort for, and negatively affect the valuation of, companies that rely on patents to protect their business interests, because the substantive patent rights—e.g., rights to exclude others from making, using and selling the invention—do not take effect until after the USPTO completes its examination of the patent application. The applicant does not have any substantive rights while a patent application is pending.

The USPTO recently enacted a Track I Prioritized Examination Program as part of the America Invents Act (AIA). The goal of the program, which took effect on Sept. 26, 2011, is to provide patent applicants who file under the program with a final determination on patentability (thumbs up or thumbs down) within a much shorter timeframe—a year or less. And, initial reports are that the program is much faster than that. Within its first year, multiple applicants have received notices of allowance for their patent applications within 90 days. One applicant received a notice of allowance within 54 days. That is more than 12 times faster than regular examination at the USPTO.

Prior USPTO programs aimed at accelerating patent examination were riddled with onerous filing requirements, such as the requirement for the applicant to perform and report the results of a comprehensive search of the prior art. Sometimes programs were limited to specific subject matter areas deemed of interest to the government (e.g., countering terrorism or enhancing the quality of the environment) or to particular subsets of applicants who could show a special need for accelerated examination based on the applicant’s old age or failing health. Not the Track I program. By its terms, Track I Prioritized Examination is available to all patent applicants without the need for the applicant to perform a prior art search and regardless of the subject matter of the invention.

That is not to say that all patent applications will receive prioritized examination. To participate in the Track I program, the applicant must pay an additional fee to the USPTO on the same day he electronically files the complete patent application. For patent applications that have already been filed, the Track I fee must be paid upon or after the filing of a request for continued examination, but before the USPTO issues a first office action. For companies with less than 500 employees, the Track I fee is $2,400. For larger companies, the fee is double that at $4,800. This fee is in addition to the standard USPTO fees for filing, search, examination and publication of the application ($830 for smaller companies, $1,550 for larger companies). The applicant also needs to certify that it will not file more than four independent claims or more than 30 total claims in the patent application to be eligible for the Track I program. In addition, during the examination process, the applicant must reply to actions from the USPTO within the timeframes specified and without seeking extensions of time.

The USPTO has also placed a ceiling on the number of patent applications it will examine under the Track I program at 10,000 applications per fiscal year. First come, first served. To date, the Track I program has been underutilized. In its first fiscal year ending on Sept. 30, the USPTO is unlikely to reach its limit for Track I applications even though the USPTO continues to receive new patent applications at a rate of more than 450,000 per year. This tepid response to the Track I program may be due to lack of awareness by patent applicants, or skepticism in view of the lackluster performance and acceptance of prior USPTO programs for accelerated examination. Whatever the reason, if the USPTO continues to examine patent applications under the Track I program at such a rapid rate, it is likely to catch on, and applicants will be vying for coveted access to prioritized examination in years to come. Companies should be proactive in identifying key aspects of their inventions and request prioritized examination where appropriate without delay.

Contributing Author

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Peter Snell

Peter Snell is a Member in the Intellectual Property Section of Mintz Levin's New York office. Peter litigates patent infringement, patent invalidity and other intellectual...

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