Patent examination at the U.S. Patent and Trademark Office (USPTO) can be a lengthy affair. Aware of the backlog, the USPTO currently offers several options for jumping the queue and getting applications examined out of turn. These include Accelerated Examination (AE), Track One Prioritized Examination (Track One), Petition to Make Special, and the First Action Interview Pilot Program (which allows an applicant to request an early interview prior to a first office action, increasing the likelihood that the examiner will subsequently pick the case up for examination sooner than scheduled). Not all the programs are equally well used by applicants. Currently, the most popular option is Track One, where an applicant can request examination out of turn under certain conditions by paying a fee. The program does not require the applicant to provide a search report or other examination document. AE, in contrast, adds a requirement to conduct a pre-examination search and submit an accelerated examination support document. Understandably, these added steps limit the program’s popularity.
On August 16, 2016, the USPTO published several changes to the AE program in an effort to harmonize it with recent treaties and other law changes enacted since the program began in 2006. Changes in Accelerated Examination Practice, 81 Fed. Reg. 54,564 (Aug. 16, 2016). Hidden in the technical changes to the rules was a brief remark suggesting that the USPTO is considering ultimately terminating the program:
Subsequent to the implementation of the AE program in 2006, the Office implemented the prioritized examination program (referred to as ‘‘Track I’’) provided for in the AIA in a final rule published on September 23, 2011. Since implementation of Track I in 2011, the USPTO has received fewer than 200 AE requests annually. In view of the relatively low usage of the AE program, the USPTO plans to publish a request for comments in the Federal Register to seek public input on whether there is value in retaining the AE program in view of the more popular Track I program.
Id. at 54,565. Thus, while the USPTO has attempted to modernize AE, its days may also be numbered.
Technical Changes to the AE Program
As the USPTO acknowledged in the Federal Register notice, after implementing the AE program in 2006, “the patent landscape has witnessed numerous legal changes such as the America Invents Act (AIA), the Patent Law Treaties Implementation Act (PLTIA) implementing the provisions of the Patent Law Treaty (PLT), and the USPTO’s adoption of the Cooperative Patent Classification system (CPC) along with changes to USPTO systems.” Id. at 54,564. Those changes, inter alia, redefined the scope of available prior art, required the USPTO to afford applicants at least two months to respond to USPTO communications, and changed the USPTO’s patent classification scheme to harmonize it with the system used in Europe. To bring the AE program into conformity with these new laws, the USPTO made the following changes:
- Require applicants to conduct a pre-examination classification search based on the common classification system (CPC) rather than the United States Patent Classification system (USPC);
- Instruct applicants to identify in their accelerated examination support document whether an application is a pre-AIA or post-AIA application, and then provide appropriate indications of whether pre-AIA 35 U.S.C. § 103(c) (disqualifying prior art under the CREATE ACT) or post-AIA 35 U.S.C. § 103(b)(2)(C) (expanding the scope of disqualified art) applied to any references identified in the pre-examination search;
- Provide applicants with at least two months to respond to office actions, rather than the one month or thirty days previously afforded by the AE program;
- Amend the rule barring petitions, particularly petitions to designate a person with sufficient proprietary interest as the applicant or to accept a delayed priority claim;
- Amend the rule on priority claims to refer to an application data sheet rather than the first sentence of the specification;
- Require the filing of AE requests only through the USPTO’s EFS-Web electronic filing system; and
- Explain that while an oath/declaration is no longer required on filing an application after the AIA, it is a requirement under 37 C.F.R. § 1.51 and thus must be present upon filing for entry in the AE program.
Id. at 54,565-66.
Comparison of AE to Track One
Unlike the AE program, Track One does not require a pre-examination search or an accelerated examination support document. Rather, an applicant need only pay a fee and have (or amend) its application to present a maximum of four independent claims, thirty total claims, and no multiple dependent claims. 37 C.F.R. § 1.102(e). As with AE, Track One permits an applicant to take extensions of time, but doing so will result in expulsion from the program. Both programs have an average first action pendency of about four to five months, as compared to eighteen months for a standard application.
As Track One does not force an applicant to conduct a pre-examination search and put on record its analysis of the identified art, it has generally been more popular (despite having a substantially higher fee for entrance into the program). The USPTO stated in the recent AE Federal Register notice that it receives an average of fewer than 200 AE requests annually. 81 Fed. Reg. at 54,565. In contrast, the USPTO’s most recent statistics show it received between 700-1200 Track One requests per month for the twelve months to July 2016. USPTO Data Visualization Center, Patents Dashboard, http://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1007 (last visited on Aug. 19, 2016). Given this significant disparity in usage, it is not surprising that the USPTO is considering whether to terminate the AE program.
Regardless, at present, both programs are available, and an applicant desiring to have a case considered out of turn should consider the benefits and drawbacks of each option. If cost is a concern, then AE may be a better option. But if an applicant is willing to pay for faster examination while seeking to minimize prosecution history, then Track One may be the preferred choice.