• The USPTO “Three-Track” Initiative
  • April 18, 2011 | Authors: Salvatore Anastasi; Joseph R. Falcon
  • Law Firm: Barley Snyder - Malvern Office
  • The week, the United States Patent and Trademark Office (USPTO) announced the first step in implementation of a new patent examination initiative, which they claim will provide applicants greater control over the speed with which their applications are examined.   Pendency has been a major concern with the USPTO, considering that some applications are not being assigned for examination up to five years after filing. The “Three-Track” initiative is intended to promote greater efficiency in patent prosecution, by reducing pendency of some application.

    Under Track I, prioritized examination, announced by the USPTO this week and will provide a first Office action on the merits within four months and a final disposition within twelve months of the grant of a Track I request.

    Starting May 4, 2011, an applicant may request prioritized examination with payment of a $4,000 request fee and other filing fees. see 76 Fed. Reg. 18399. Prioritization is available only for an original and complete utility or plant non-provisional application that contains or is amended to contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims. If the prioritization is granted, the application receives special status and placed on the examiner's special docket throughout prosecution until a final disposition is reached in the application. As a result, the applicant may receive final disposition within twelve months of prioritized status being granted, which may include:
    (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.

    A continuation application that claims priority to a pending application may be filed along with a Request for Prioritized Examination, however, a Request for Prioritized Examination will not be granted when filed with a new PCT national stage application under 35 U.S.C. 371.

    At first, the USPTO will limit the number of applications filed with a Request for Prioritized Examination to 10,000 applications for the 2011 fiscal year, and then revaluate any future limitations on requests.

    In the near future, an applicant will have three options as part of the “Three-Track” initiative, including arequest a traditional examination under the current procedures (Track II), or for non-continuing applications first filed in the USPTO, a request for an applicant-controlled delay for up to 30 months prior to docketing for examination (Track III), which is expected to be implemented in the Fall of 2011.