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USPTO’s fast-track examination: A case in point

With its proven ability to significantly reduce patent examination times, the Track I program will likely see an uptick in use

Long patent application examination times may be a thing of the past for patent applicants who are willing to pay an additional filing fee. The U.S. Patent & Trademark Office (USPTO) has aimed to reduce patent examination times under the Track I Prioritized Examination Program, but how fast is it? For one recent applicant, the USPTO reached a final disposition on the merits and allowed the applicant’s three patent applications, each of which of was filed under the Track I program, in less than about three months. This was significantly accelerated, considering that the USPTO’s normal delay for patent applications in the same technology area is more than two-and-a-half years. Thus, the USPTO met its objective under the Track I program to expeditiously consider and make a final determination on the applicant’s patent applications. Under normal track examination, the applicant would still be awaiting an examination.

The applicant’s original patent application was initially filed under the USPTO’s normal track examination program. At that time, the Track I program was not yet available. More than two-and-a-half years later, the USPTO completed its examination of the patent application and issued a final rejection. This left the applicant with three options: request the patent examiner to reconsider the final rejection and to continue the examination of the patent application, file an appeal or abandon the patent application altogether. Adding to the decision, the patent examiner had identified multiple, distinct categories of inventions that could only be pursued by the applicant in separate but related (divisional) patent applications. If the applicant were to file the divisional applications one after another using the USPTO’s normal track program, the applicant could have expected to wait for years before any patent(s) could begin to issue.

The applicant opted to continue the examination before the patent examiner. As is often the case, the applicant declined to pursue the alternative options of an appeal or an abandonment of the patent application. An appeal to the USPTO’s Patent Trial and Appeal Board can be time-consuming and costly, and an outright abandonment of the patent application guarantees that the applicant will not receive exclusive rights to the invention.

Opting for continued examination, the applicant had a choice between examination under the USPTO’s normal track program and accelerated examination under the Track I program. Specifically, by that time, the USPTO had enacted the Track I program, which took effect on Sept. 26, 2011. Ultimately, the applicant filed three divisional applications under the Track I program by leveraging a provision under which divisional patent applications are eligible for accelerated examination. 

The USPTO acknowledged and granted the applicant’s requests for Track I examination within about a month. The USPTO then referred the divisional applications to the patent examiner for examination. For each application, the examiner completed the examination within about three months or less. In each application, the examiner issued a first office action Notice of Allowance.

Use of the USPTO’s Track I program can be expected to increase if the USPTO continues to examine patent applications under the program at such an accelerated rate.

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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