Three Track Patent Examinations: USPTO Provides Further Guidance

By Stanley F. Chalvire and Daniel McGeeney

February 2011

In a press release issued on February 2, 2011, the U.S. Patent and Trademark Office (USPTO) announced updates to its proposed “Three Track” examination initiative. The Three Track examination initiative was proposed by the USPTO in June 2010 (75 Fed. Reg. 31763) as a program designed to provide applicants some control over the timing of the examination of their patent applications. The proposed initiative aims to both provide applicants with the speed of examination they need and to reduce the overall pendency of patent applications, which presently stands at almost three years.

Generally, the proposed Three Track examination initiative would provide applicants with the opportunity to: (1) request prioritized examination of a non-continuing application within twelve months of their filing date (Track I); (2) request that an application that does not claim the benefit of a prior-filed foreign application or a prior non-provisional application be placed in an applicant-controlled up to 30-month queue prior to docketing for examination (Track III); or (3) make neither of the Track I or Track III requests and proceed in accordance with the current standard procedure (Track II).

The proposed Track III examination would allow applicants to request a delay in prosecution of up to 30-months either upon filing of the application or in response to a notice to file missing parts. The specific length of the delay can be chosen by the applicant (not to exceed 30-months), and upon expiration of the time period the application would be placed in the queue for examination based upon the date that the request for examination was made by the applicant.

The proposed Track I has garnered the most interest and was the subject of the USPTO’s February 4, 2011 notice of proposed rulemaking (76 Fed. Reg. 6369). The notice of proposed rulemaking on Track I of the proposed initiative published by the USPTO on February 4th proposes that, “Under Track I prioritized examination, an application would be accorded special status and placed on the examiner’s special docket throughout its entire course of prosecution before the examiner until a final disposition is reached in the application.” Track I further provides that a final disposition, which may include for example, the issuance of a notice of allowance or a final rejection, or the filing of a request for continued examination, will be issued within twelve months from the date that prioritized status has been granted.

In the February 4th notice of proposed rulemaking, the USPTO also proposed additional eligibility criteria for Track I examination. For example, eligible applications may not include more than four independent claims, may not exceed thirty total claims and must be filed through the USPTO’s electronic filing system (EFS-Web). Additionally, an application that is undergoing prioritized examination will lose its special status if the applicant takes any extension of time beyond the period set in an Office Action. In addition to complying with other specified formalities, to take advantage of the proposed Track I prioritized examination, both large and small entity applicants would be required to pay a $4,000 fee for each prioritized application, although the USPTO has indicated that it is working to extend a fifty percent discount to small entity applicants on any filing fee associated with Track I.

The USPTO also indicated that it is continuing to refine the Three Track proposal; however because “the vast majority of public input was supportive of the Track I” proposal, it would “proceed with immediate implementation of the Prioritized Examination Track (Track I), providing fast examination for applicants desiring it, upon payment of the applicable fee and compliance with additional requirements.” (76 Fed. Reg. 6369) During the program’s first year, the USPTO plans to limit the number of applications in the program to 10,000 to ensure that the USPTO can meet the stated twelve month goal.

For more information or to discuss the USPTO’s proposed Three Track examination initiative, as well as other strategies for expediting the examination of your patent application, please contact Daniel McGeeney or Stan Chalvire.

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