USPTO to Offer Expedited Prosecution (12 Month Prosecution)
As part of the ongoing effort to help improve patent quality while reducing patent application latency, the United States Patent and Trademark Office (USPTO) will be implementing a Three-Track patent examination system. This
system will allow an applicant to request expedited examination, delayed examination, or (by not filing any request) traditional examination. The system, which begins on May 4, 2011, will be limited to the first 10,000 applications
through the end of the fiscal year, September 30, 2011. While Track I (expedited examination) and Track II (traditional examination) will be available on May 4, it is expected that Track III (delayed examination) will not be available
until September 30, 2011.
Under Track I (prioritized examination), the application will be placed on a special docket for the examiner, with the intent that a final disposition of the application will occur within twelve (12) months of the prioritized status
being granted. A final disposition means a notice of allowance, a final Office Action, the filing of a Notice of Appeal, a declaration of Interference, the filing of a Request for Continued Examination,
or abandonment. Prioritized examination may be useful to applicants that rely upon a quick grant of patents to protect their interests, but are weary of the substantial disclosure requirements and relatively high cost under the Accelerated
Examination program.
To qualify for prioritized examination, the following conditions must be met. First, the application has to be a new original utility or plant non-provisional application after May 4, 2011. Under the current rules, no other type
of application qualifies for prioritized examination, including a national stage application or design (which has its own fast track option).
Second, the application must be complete (all inventor documents must accompany the filing) and it be filed electronically. In addition to any fees, such as filing fees, search fees, excess claim fees, etc., the application must
be filed with an oath or declaration of each inventor.
Third, the application must contain no more than four (4) independent claims and no more than thirty (30) total claims. Multiple independent claims are not allowed for Track I.
Fourth, the request for prioritized examination, along with the fees, must be filed with the application. The prioritized examination fee, the same for a large entity and a small entity, is $4,000. This is in addition to the normal USPTO charges. Yet, this is a relatively small additional charge for a one year prosecution when viewed against the Accelerated Examination program.
Fifth, and last, the number of requests approved must not have reached the limit for the fiscal year.
The Track III process (delayed examination) is still being finalized by the USPTO. Based upon early comments, the USPTO expects the delayed examination to substantially incorporate several provisions that would allow the applicant
to both delay the examination of the application and delay the payment of certain fees. As it stands now, an applicant for a new original utility or plant non-provisional application requesting Track III would be granted a delay
in the docketing of the application for examination, the payment of the search fee, the payment of the examination fee, the payment of the claims fee, and the payment of a surcharge (when applicable) for a maximum of 30 months. This
delayed examination may provide the necessary time in which applicants can decide whether or not the examination of the application is economically feasible or practical.
Please contact the Troutman Sanders Patent Team if you would like more information on how you may want to tailor your prosecution strategy based upon your business needs. With an average of 1200 applications filed at the USPTO each day, we recommend considering the Track I patent examination system prior to its close upon 10,000 filings.