The USPTO has issued a proposed rulemaking supporting its plans to implement "Track I" of the three track examination program announced last year. According to the announcement, the USPTO is still considering public comments on other aspects of the program, but wants to move forward with Track I because "the vast majority of public input was supportive."

The Promise of Fast-Track Examination

According to the USPTO, applications accepted into Track I would be accorded special status and placed on the Examiner's special docket throughout prosecution before the Examiner (but not the Board), with the goal of providing a "final disposition" within twelve months.

"Final disposition" means

  1. Mailing of a Notice of Allowance
  2. Mailing of a final Office Action
  3. Filing of a Notice of Appeal
  4. Declaration of an interference
  5. Filing of a Request for Continued Examination
  6. Abandonment

The Requirements for Fast-Track Examination

To qualify for fast-track examination, an application must meet the following requirements:

  • be an original (non-reissue) utility or plant application filed under 35 USC § 111(a)
  • be filed on or after the implementation date of this program
  • be filed via the USPTO's electronic filing system (EFS-Web)
  • be filed with a request for fast track examination and the fast-track fee of $4000
  • be "complete" under 37 CFR 1.51(b) (specification, claims, drawings, inventor declaration, and all fees)
  • include no more than 4 independent claims and 30 total claims

To retain fast-track status, responses must be filed without taking an extensions of time.

Unless and until the USPTO has more fee setting authority, it is not able to offer a small entity fee reduction for the prioritized examination fee.

The USPTO will cap the program at 10,000 applications per year.

No Guarantees

In response to comments asking "whether the Office will refund or at least partially refund the fee if the Office is not able to meet its obligations and prioritization does not occur," the USPTO answered with a resounding "no."

The Office will not refund the fee required for requesting prioritized examination under Sec. 1.102(e). The twelve-month time period to final disposition is an aggregate goal of the Office for the examination of all Track I applications. The fact that the Office in a particular application did not meet the goal would not entitle the applicant to a refund. It should also be noted that applicants will have received advancement of examination even if the goals are not met.

The Elephant In The Room

I raised some concerns about the proposed Track I program when it was first announced. My biggest concern is that the USPTO will not be able to meet its goal of processing Track I applications without further delaying examination of other applications, particularly if Congress does not let the USPTO spend the fees it collects under this program. The new Federal Register notice responds to public comments on this issue:

If the appropriations that the Office receives are not adjusted to reflect the projected fee revenue resulting from the prioritized examination program, then the Office will need to consider eliminating the program.

Thus, this program, like other initiative the USPTO would like to implement to achieve much-needed improvements, is at the mercy of Congress. Let your representatives know that the USPTO needs to keep its fees!

What's Not To Like?

From the perspective of an individual applicant seeking prompt examination of an individual application, this program is hard to criticize. The $4000 fee is less than most applicants would have to spend to prepare an application for Accelerated Examination. If the USPTO can meet its goals of examining fast-track applications within twelve months, this could be a very attractive program for applicants seeking prompt patent grant.

Many commentators are assuming that biotech and pharmaceutical applicants will not have much interest in this program because of their views that such applicants file patent applications early in the product development timeline, don't want a patent to issue before FDA approval has been obtained, and can obtain additional patent term under the patent term extension and/or patent term adjustment statutes. While this may be true for many biotech and pharmaceutical applications, it certainly isn't true for all of them. Moreover, given the indefinite delays that an application can face after a Request for Continued Examination (RCE) is filed, this program may offer a new alternative—filing a new continuation application with a request for prioritized examination instead.

The USPTO is accepting comments on the proposed rulemaking until March 7, 2011. Once the USPTO considers those comments it will publish a final rulemaking that will set the implementation date for the program. Given normal regulatory procedures, I would expect this program to start sometime in mid- to late 2011. It will be interesting to see how quickly the 10,000 application ceiling is reached.