November 2011 Issue

Did You Know?

The United States Patent and Trademark Office (USPTO) now provides for fast-track examination.  In recent years, application backlogs and the average time needed to process a patent application have plagued the USPTO.  It currently takes almost three years to process a typical patent.  To address these problems and promote greater efficiency within the Office, the America Invents Act provides a mechanism for prioritized examination within the USPTO.  This mechanism, known as the Track One program, became available on September 26, 2011, and provides patent applicants with some control over when their applications are examined.  Participation in the Track One program is limited to 10,000 applications per USPTO fiscal year.  As of October 13, 2011, 254 applications have been filed as Track One cases in the current fiscal year.  Statistics regarding the Track One program are currently available on the USPTO website at the following location:

To be eligible for expedited processing under the Track One program, a nonprovisional application (which may include continuation and continuation-in-part applications) must be filed on or after September 26, 2011, via the USPTO’s electronic filing system, must not include any multiple dependent claims, and must contain no more than four independent claims and thirty total claims.  In addition, the application must be deemed “complete.”  To be “complete,” all application parts, necessary fees, and a request for prioritized examination must be submitted on the date of filing.  For a large entity, the necessary fees include (1) a $1,250 application filing fee; (2) a $4,800 prioritized examination fee; (3) a $130 processing fee; and (4) a $300 publication fee.  Thus, aside from any applicable size or excess claims fees, the total large entity fees for a prioritized application will be $6,480.  Small entities receive a 50% discount on the prioritized examination and application filing fees.  Participation in the Track One program does not require conducting any patentability searches or commenting on the results of such searches.

Applications receiving a priority designation will be “accorded special status and placed on the examiner’s special docket throughout its entire course of prosecution . . . until a final disposition is reached.” Changes To Implement the Prioritized Examination Track (Track 1) of the Enhanced Examination Timing Control Procedures, 76 Fed. Reg. 59050 (Sept. 23, 2011).  The USPTO’s stated goal is to provide a “final disposition” within twelve months of granting prioritized status to an application.  A “final disposition” may include (1) allowance, (2) final rejection, (3) the declaration of an interference, or (4) abandonment.  Any request for an extension of time will cause the application to be ineligible for further treatment under the prioritized examination (Track One) program.

The Track One program may be a useful option for entities interested in procuring granted patents quickly.  For example, start-ups interested in quickly building a patent portfolio to assist with raising capital may use the Track One program to expedite the processing of their patent applications.