• Patent Office Announces Proposed New Initiative to Provide Applicant-Customized Examination Tracks
  • July 26, 2010 | Author: Ryan M. Flandro
  • Law Firm: Venable LLP - Washington Office
  • The U.S. Patent and Trademark Office (USPTO) recently took a page out of the Burger King® customer service handbook and announced a new proposed Have it Your Way®-style examination timing control initiative.  The program under consideration would allow patent applicants to select between “prioritized,” “traditional,” or “delayed” examination for applications first-filed in the USPTO, provided certain conditions are met.  The initiative is the Office’s latest effort to tackle the massive backlog of pending patent applications, but applicants’ potential costs could be high in some situations, both monetarily and in terms of patent term adjustment (PTA) offsets.

    Three Examination Tracks

    The proposed examination tracks are briefly summarized below:

    Track I (Prioritized Examination):  The proposed initiative offers a new option for applicants seeking expedited examination but who might not be eligible for the current accelerated examination program.  For USPTO first-filed applications, an applicant will be able to expedite examination by submitting, at any time, a request along with payment of a “cost recovery fee.”  According to the notice, the fee is expected to be “substantial” in order to cover the cost of reaching first action in four months and final disposition in 12 months once prioritized status is granted.  Additionally, applications placed in Track I may be subject to early publication and claim number restrictions (e.g., maximum of four independent claims and 30 total claims).

    Despite the potentially high costs and added restrictions, applicants seeking speedy examination may choose this option over the current accelerated examination scheme in order to avoid estoppel issues.  The current accelerated examination program requires applicants to conduct a pre-examination search and provide an “accelerated examination support document” distinguishing the pending claims from the prior art.  Such analysis can create certain estoppels which may limit the scope of the claims.  Track I of the proposal would not require either a search or a support document and would instead be based solely on payment of the fee.

    Track II (Traditional Examination):  The proposed “traditional examination” track will mirror the current standard examination timing, at least for U.S. first-filed applications.  Where an applicant fails to specify a particular track upon filing, Track II will be the default.

    Track III (Delayed Examination):  For non-continuing applications that do not claim the benefit of a prior foreign-filed application, Track III will offer applicants the option of deferring examination (and payment of the examination fee) for up to 30 months.  Under Track III, the applicant must request examination and pay a surcharge within the 30-month window from the actual filing date or from any U.S. provisional application from which priority is claimed in order for the application to enter the examination queue.  Otherwise, the application will be deemed abandoned.  The receipt date of the examination request (not the actual filing date) will determine the application’s order in the queue except that, once examination is requested, applicants may request prioritized examination (Track I), if desired.

    Foreign Priority Applications:  The proposed initiative is likely to have the greatest effect on those applications that include a priority claim to a prior foreign-filed application (i.e., filed first in another country).  Pursuant to the notice, no action will be taken by the USPTO on such applications until the applicant submits the following:

    • a copy of the foreign search report, if any;
    • a copy of the first office action from the foreign office; and
    • an appropriate reply to the foreign office action as if the foreign office
    • action was made in the application filed in the USPTO.

    Upon submission of such documents, the applicant may then request examination processing under one of Tracks I or II.  Thus, those applications claiming the priority benefit of a prior foreign-filed application will be placed on hold until examination in the foreign application begins.

    A public meeting is scheduled for 1:30 pm EDT on July 20, 2010 at the USPTO headquarters in Alexandria, VA.  The USPTO plans to broadcast the public meeting via webcast.  Those interested in attending in person, however, must register by 5:00 pm EDT on July 16, 2010.  Furthermore, comments on the proposed initiative will be accepted by the USPTO until August 20, 2010.

    While the initiative appears to offer benefits to both applicants and the Office, the notice is short on details and, consequently, raises as many questions as it answers.  Applicants should seriously consider submitting questions and comments during the comment period to ensure that any resulting program achieves its stated goals.