On April 4, 2011, the USPTO issued aNotice in the Federal Register announcing the implementation of fee-based prioritized examination, also known as "Track I" of its three tracks of examination options proposed in June of 2010. Track I will be available for non-reissue applications filed on or after May 4, 2011. While this program may be attractive to applicants seeking prompt examination, some of the details warrant a closer look.
The Up-Front Costs
Unless and until the USPTO has the authority to offer a reduced fee for small entities, the fee for Track I examination will be $4000 for all applicants, plus a $130 fee for processing the request for prioritized examination.
If Congress authorizes a reduced fee for small entities, the small entity fee will be $2400, and the large entity fee will be $4800. (The $130 will remain the same for all applicants.)
The Up-Front Filing Requirements
Track I will be available for new, original (that is, non-reissue) utility or plant nonprovisional applications filed under 35 USC § 111(a) on or after May 4, 2011.
Track I will not be available to international applications, design applications, reissue applications, provisional applications, or reexamination proceedings.
Track I will not be available to national stage applications, but could be sought by filing a "by-pass continuation" application instead.
Track I will be available to continuing applications (continuation and divisional applications).
A request for prioritized examination must be filed at the same time the application is filed. The application must be filed as a complete application (no "missing parts"), and all papers must be filed electronically (via EFS-WEB).
Thus, the application must be filed electronically with:
- an inventors' oath or declaration
- the basic filing fee
- the search fee
- the examination fee
- any excess claims fees
- any application size fee
- the publication fee
- a request for prioritized examination
- the prioritized examination fee (e.g., $4000)
- the request for prioritized examination processing fee ($130)
The application must contain no more than four independent claims, no more than thirty total claims, and no multiple dependent claims.
The On-Going Requirements
An application accepted for prioritized examination will be accorded "special" status and placed on the examiner's special docket throughout prosecution until a "final disposition." However, if an extension of time is taken for any response, prioritized examination will be terminated. Also, prioritized status will be lost if the application is amended to include more than 4 independent claims, more than 30 total claims, or any multiple dependent claims.
Once an application is accepted for prioritized examination, it may be useful to contact the examiner to confirm that the application is accorded "special" status.
The PTO's Prioritization Goals
The USPTO's goal for Track I applications is to provide a "final disposition" within twelve months of prioritized status being granted. According to the USPTO, "final disposition" means any of
- a notice of allowance
- a final Office action
- a notice of appeal
- a declaration of interference
- a request for continued examination
To manage its Track I workload, the USPTO only will accept up to 10,000 applications into Track I for the remainder of fiscal year 2011.
Dead-End Express Lanes?
Track I applications only will be prioritized until one of the "final disposition" benchmarks is reached, which includes a final Office Action. We already experience questionable "final" Office Actions, and I am concerned that Track I examiners will be pressured (directly or indirectly) to issue final Office Actions prematurely, such as where a second, non-final Action is warranted.
No Guarantee Against Traffic Jams
The USPTO has emphasized that the twelve month goal is an "aggregate" goal. The USPTO is not promising to attain this goal for every Track I application, and will not refund any prioritization fees if this goal is not met. The USPTO will publish quarterly statistics on its Track I application processing.
Despite public comments advising to the contrary, the USPTO is moving forward with Track I despite the fact that it does not have a full budget for 2011, let alone a budget that would permit it to retain and spend the Track I fees. For some reason, the USPTO is encouraged by the fact that "[t]he President's Fiscal Year 2012 Budget Request for the [USPTO] includes the revenue that is expected to be generated by the prioritized examination program." Perhaps the USPTO is not aware of the budgetary conflicts between the Obama Administration and Congress!
Traffic Jams Ahead
The USPTO does acknowledge that "implementation of the Track I program could have an effect on the examination of non-prioritized applications," at least for the current fiscal year. The USPTO's main concern is the impact of "the current budget situation" on its "ability to hire new examiners." Again, the USPTO finds some reason to believe that "any effect should not extend into future fiscal years." I guess come October 1 (fiscal year 2012), the USPTO will be flush with funding and have qualified examiners ready to start work.
Better Than The Back Roads
It is likely that many applicants will be eager to take advantage of Track I. Because qualifying for Track I appears to be straight-forward, Track I applicants should not suffer the delays associated with obtaining approval of a Request for Accelerated Examination or a Patent Prosecution Highway (PPH) Request. More significantly, Track I applicants will not have to undertake the search and analysis required for Accelerated Examination, and will not have to limit their claims to those allowed by another Patent Office, as they do for the PPH.
It will be interesting to see how many applications are filed under Track I, and how well the USPTO is able to meet its twelve-month benchmark.