USPTO proposes three-track patent examination process

On June 3, 2010, the U.S. Patent and Trademark Office announced a proposal to revise the patent examination process in a potentially significant manner.  Under the new proposal, patent applicants can choose one of three “tracks” for patent examination:

  • Track I (prioritized examination):  Applicants who pay an additional fee will receive a first office action within four months.  Final disposal (allowance or final rejection) will occur within twelve months.
  • Track II (standard examination):  This option will involve standard fees and will proceed under current procedures.
  • Track III (deferred examination):  Non-continuing applications that originate in the U.S. may have examination deferred for up to 30 months.  The examination fee — and possibly also the search fee — also may be deferred during this period.

In a telephone conference, USPTO Chief Communications Officer Peter Pappas explained that the additional processing fees for Track I are not yet set.  However, he hinted that the fees would be substantial enough so that “only the most important” applications seek Track I processing.  He also stated that the Track I fee may vary based on technology, and that the fee will not be reduced for small entities unless Congress amends the Patent Act to permit the fee reduction.

The USPTO does not intend this proposal to replace the USPTO’s existing accelerated examination, Patent Prosecution HighwayProject Exchange, Green Technology Pilot, or similar programs.  Instead, it will supplement those programs and give applicants an additional option to accelerate the process.  In addition, applicants who first file in foreign countries will not be eligible for the fast track of Tier I until after they receive an action in the country where the application was first filed. 

Conversely, the “slow track” of Tier III can benefit applicants with long product lead times — such as pharmaceuticual industry applicants —  by deferring costs and examination for up to 30 months.  The USPTO hopes that enough Tier III applications will ultimately be abandoned to offset the additional workload required to “fast track” the Tier I applications.

The USPTO will hold a public meeting to discuss the proposal on July 20, 2010 and the USPTO is accepting written public comments through August 20, 2010.  The full proposal is available in the July 4, 2010 edition of the Federal Register.

One response to “USPTO proposes three-track patent examination process

  1. This is an indication that Director Kappos understands that different patent applications should be treated differently — implementing this concept could contribute to increased efficiency at the USPTO. Though I’m not yet convinced that fast/ordinary/delayed is the ideal system for categorizing patent applications, at least it’s a step in the right direction. I believe that the USPTO needs to start reviewing several different types of multi-tiered approaches to patent examination, because the traditional one-size-fits-all approach doesn’t meet the needs of today’s environment. Until we get real patent reform legislation, Kappos & co. will have to take up the slack.

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