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The USPTO’s Proposed 3 Track Examination of Patent Application

Are there times when you have wanted greater control over the speed at which your patent is examined by the United States Patent Office (USPTO)?  You may wish, for example, to speed up the patent examination in order to woo venture capitalists with an issued patent.  Or, you may wish to postpone examination while you are refining a product.  This would allow you the possibility of modifying your claims so that the pending claims cover the modified commercial embodiment. 

The USPTO is investigating implementing a three track system for patent applications: 

1)      prioritized examination under Track I;

2)      delayed examination for their original utility or plant non-provisional application under Track III; or

3)      processing the application under the current examination procedure under Track II. 

Since the USPTO proposes to implement Track I before Track III, the focus of this article will be on the currently proposed requirements and procedures for prioritized examination under Track I.  The USPTO will provide notice of the proposed requirements and procedures for delayed examination at a later date.

When Track I is implemented, the USPTO will grant only 10,000 requests for prioritized examination under Track I the first year.  The maximum number of requests that will be granted each year will be evaluated after the first year.  The application must be an original utility or plant non-provisional application.  This includes continuation applications.  The nonrefundable fee proposed for prioritized examination is $4,800.  At this time, the USPTO does not have authority to discount the fee for small entities.  If the USPTO does receive authority to provide a discount, the fee for small entities will be $2,400. 

In order to avail themselves of the expedited prosecution, Applicants would be required to electronically file the complete non-provisional application along with a request for prioritized examination.  Only 4 independent claims and a total of 30 claims, and no multiple dependent claims could be presented in the application. 

When a request for prioritized examination is granted for an application, the application will be accorded special status and placed on the examiner’s special docket for the duration of prosecution.  The goal is to reach final disposition within 12 months of the granted requested.  Final disposition includes 1) mailing a Notice of Allowance; 2) mailing a Final Office Action; 3) filing a Notice of Appeal; 4) declaring an interference; 5) filing a Request for Continued Examination; 6) abandoning the application.

The time periods for responding to USPTO actions would be the same as under the current examination procedure.  However, if the applicant tries to extend the time period for reply by filing a petition for an extension of time, prioritized examination of the application will be terminated.  Prioritized examination will also be terminated when a Request for Continued Examination is filed or a Notice of Appeal is filed.  Additionally, the application will not have special status in an interference.

Once Track I has been implemented, please contact Vidas, Arrett, and Steinkraus to discuss whether Track I is a suitable course of action for your situation. 

This update was prepared by Jennifer Buss. Jennifer is an intellectual property lawyer at Vidas, Arrett & Steinkraus. For more information about this update, please contact Jennifer at 952-563-3018 or via email.

This update should not be considered legal advice. Your receipt of this update does not establish an Attorney-Client Relationship. We do, however, invite you to contact us if you would like us to represent you.

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