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New expedited examination procedure at the USPTO

Date: 01 March 2011
Author: Charles Berman
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Until 25 August 2006, the grounds on which examination of a patent application at the United States Patents and Trademarks Office (USPTO) could be expedited (via a so-called "Petition to make special") were somewhat restricted.
 
An accelerated examination procedure has been available since 25 August 2006.  However, this procedure is exceedingly complex and expensive.  It involves conducting a detailed pre-examination search, which must meet stringent requirements, and the filing of an analysis containing a detailed discussion of prior art references.  Also, the accelerated examination procedure is not available for an application filed as a US national phase application from a PCT application.
 

Implementation of "Track I" prioritised examination

 

In June of last year the USPTO issued a press release inviting comment on a proposed three track patent processing system.  Under the proposed initiative an applicant could request:
 
Track I: - prioritised examination;
 
Track II: - traditional examination under current procedures; and
 
Track III: - an applicant-controlled delay for up to 30 months prior to docketing for examination.
 
Track III, which is only to be implemented at a later, unspecified date, is intended for applicants who are unsure of the commercial value of their applications and who may not pursue the applications.  It is proposed that the delay will be achieved by delaying paying the requisite search, examination and excess claim fees.
 
Due to the fact that most of the responses received regarding the Track I procedure were positive, the USPTO issued a notice in the US Federal Register dated 4 February 2011 proposing to implement the Track I procedure immediately.  The notice has set a deadline of 7 March 2011 for comments so it is anticipated that the program will commence shortly after that date.
 
In order to qualify for prioritised examination under Track I, a fee is payable and the application must satisfy a number of other requirements, namely that the application must be complete, an oath and declaration must be filed on filing and all applicable fees must be paid.  The request for prioritised examination must be filed and the prioritised examination fee must be paid at the time of filing the application.  The application also needs to be filed via the USPTO's electronic filing system.
 
At the moment, the fee payable for prioritised examination has been set at US$4,000 and there is no distinction between a large entity and a small entity.  The USPTO is seeking the passage of legislation providing for a 50% reduction in the fee for a small entity.  If the legislation is passed, the fee will become US$4,800 for a large entity and US$2,400 for a small entity.
 
The specification must contain, or be amended to contain, a maximum of four independent claims and thirty claims in total.  In addition no multiple dependent claims are to be present in the application.
 
Unlike the accelerated examination procedure there is no need to conduct a pre-examination search or a detailed analysis of the most relevant references.  The new procedure also has the advantage that, because the applicant need not do an analysis, there is no need to comment on the prior art resulting in less material being on record.
 
The proposed procedure for Track I will be available only for applications filed on or after the implementation date and includes continuation applications filed after the implementation date.  The USPTO proposes limiting the number of requests for prioritised examination to a maximum of 10,000 applications in the first year and to revisit the annual cap at the end of the year  to determine what the maximum cap, if any, should be.
 
The aggregate goal is to provide a final disposition within twelve months of prioritised status being granted.  A final disposition means the occurrence of one of the following events:  (1) mailing of a notice of allowance, (2) mailing of a final office action, (3) filing of a notice of appeal, (4) declaration of an interference by the Board of Patent Appeals and Interferences (BPAI), (5) filing of a request for continued examination or (6) abandonment of the application, within twelve months from the date of grant of the prioritised status.  It is to be noted that the aggregate goal is a twelve month time period and the time taken to provide a final disposition for individual cases may exceed the twelve month period.
 
The time periods set in Office Actions would be the same as for ordinary examination.  However, if an applicant files a petition for an extension of time to extend the time period for filing a reply, the prioritised examination of the application will be terminated.  Prioritised examination is also not applicable to the appeal or interference procedures.
 

Conclusion

 

The new procedure does not mean that it will be easier to obtain a US patent for a commercially significant invention.  However, there is now a mechanism available to applicants to expedite examination of commercially important applications without the onerous requirements of a detailed pre-examination search and a comprehensive analysis albeit at a not-insignificant cost.
 
If you have any questions or comments with regards to this subject, please contact Charles Berman.
 
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