Recognizing that one size may not fit all, the PTO recently introduced a proposal for multi-track examination of patent applications. The proposal, which presents three options, is intended to provide applicants with more control over determining when their application is examined while at the same time increasing patent examining efficiency and reducing pendency. Track 1 expedites examination with a goal of achieving final action within 12 months, and Track 2 works substantially the same as the current examination process. Track 3 is a slower track, allowing for a delay in applications up to 30 months.
Track 1 - Prioritized Examination
Under the proposal, prioritized examination will be as simple as filing a request and paying a fee intended to “recover all of the costs associated” with prioritized examination. The PTO has not yet set the fee for prioritized examination, but expects it to be substantial.
The PTO is also considering limiting the number of claims (4 independent/30 total) and requiring early publication. The PTO would like to offer reduced fees for small entities and micro-entities but would need enhanced authority to do so. Upon payment of the fee, Track 1 applications will be placed in a single queue, along with all other prioritized applications, e.g., with accelerated examination and PPH cases. The PTO is hoping to provide a first Office Action within 4 months and a final disposition within 12 months.
Track 2 – Status Quo
This track, designed to be the default designation, will progress in much the same way as current patent examination. In applications not claiming foreign priority, applicants would pay the filing, search and examining fee when filing, as they do now, but would have the option of abandoning the application after seeing a completed search report, and obtaining a partial refund.
The PTO also intends to allow applications to switch tracks if needed. Examination of an application initially in Track 2, for example, can be sped up or slowed down by moving to Track 1 or Track 3.
Track 3 – Delayed Prosecution Track
3 allows an applicant to delay docketing for examination up to 30 months. An application in this track is placed in a 30 month queue, and a request for examination must be made within the 30-month period or the application will be abandoned. Upon an examination request the application is docketed for examination and will be taken up for examination as if the request date was the actual filing date.
Applications requesting delayed examination will still be published at the 18 month date. Track 3 examination will be available only for applications that do not claim foreign priority.
Patent Term Adjustment
PTA will be affected by multi-track examination, it is just not sure exactly how at this point. The PTO is contemplating offsetting any positive PTA accrued in a Track 3 application against a period of delay. Defining when such a delay period starts and stops, however, is still under consideration.
Director Kappos and the PTO are firmly behind this initiative, and a proposed rules package can be expected later this fall. As stated in the Director’s public blog, the PTO sees this initiative as helping to put Americans to work by enabling the most time-critical patent applications to be prioritized.
Based on public reaction to the multi-track initiative, however, one controversial provision -- that of mandatory work sharing -- will be eliminated in the forthcoming rules. In the proposed initiative, applications claiming foreign priority were not eligible for prioritized examination (in Track 1) or regular examination (in Track 2) until a copy of a search report, if any, a copy of a first action on the merits from the foreign patent office, and a reply to that office action were provided to the PTO. As discussed by Robert Clarke, the PTO’s Deputy Director, Office of Patent Legal Administration, this mandatory work sharing provision met with near universal objection and will be removed.1 The PTO will instead work to promote but not require work sharing with foreign offices.
The PTO’s Multi-Track Patent Examination initiative can be viewed at http://www.uspto.gov/web/offices/com/strat21/action/p2p01.htm