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
prioritized examination under Track I;
delayed examination for their original utility or plant
non-provisional application under Track III; or
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
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
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.
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.