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Track I Prioritized Examination

Posted Tuesday, June 19, 2012 by Mike Gibbons

When an application for a patent is filed with the USPTO, the application goes into a queue for examination by a patent examiner. Patent prosecution ensues, and from the time that the application is filed to the time that the patent issues (the “application pendency”) is typically upwards of three years. In part this is due to the backlog of pending applications at the USPTO (641,142 as of May 2012) and the number of patent examiners available to examine them all (7139 as of May 2012).

The USPTO is hiring more patent examiners to help with the backlog, and application pendency periods are gradually coming down. Still, what if a speedier examination is desired?

The patent office has offered various programs for accelerating the examination of applications, depending on various circumstances such as the subject matter of the application or the age of the inventor for example. In accelerated examination, the goal of the USPTO is for an application to either have a patent issued or for a Final Office Action to issue within one year. (Note that a Final Office Action isn’t really final. There are various means for keeping the application in front of the patent office. You can read more about that here).

Of course, not everyone has the special subject matter or the right age to qualify for an accelerated program. So relatively recently, the USPTO has opened up accelerated examination to anyone who wants to pay a fee to participate in the program. The America Invents Act of 2011, enacted in September of last year, includes a “Track I Prioritized Examination” program, which any inventor who pays the fee may petition to enter.

In Track I accelerated examination (as with the other accelerated programs), the patent application is assigned to an examiner and basically goes to the top of that examiner’s queue (behind any other accelerated examinations already assigned to the examiner, of course). The examiner finishes the case on which he or she is working, and then picks up the accelerated case. In the case of Track I, the goal of the patent office is to issue a First Office Action in three months. Then, each time the Applicant responds to the USPTO, the response goes back to the head of the line. Accelerated handling of the patent application continues all the way through production of the patent up to the point that the ribbon copy is mailed to the inventor.

There are a couple of considerations for an inventor considering Track I prioritized examination. First is the cost. There is a program fee of $4800. This is reduced by half for small entities such as individual inventors and small businesses. This fee may seem particularly high, especially compared to the basic filing fee for a new application (which is currently usually $530 for an individual inventor). However, when one considers that a patent gets you a lengthy period of monopoly rights to practice an invention and what that monopoly right could be worth during the patent’s lifespan, perhaps it is worth the money to start that monopoly right sooner rather than later. It’s a business decision for the inventor to weigh.

Other fees for entry into the program include a $130 petition fee, and the $300 publication fee. Note that you pay the publication fee anyway if a patent issues, but with Track I you are asked to pay it up front. (Note that all of the fees listed herein are USPTO fees, current as of June 19, 2012, and are subject to change as the USPTO sees fit.)

Another consideration is that the USPTO currently caps the number of Track I applications it accepts at 10,000 a year (hence a reason to petition for entry).

A final note is that Track I only lasts through the first round of prosecution. That is, an Applicant may get either a first-action allowance, or an allowance on the first response to an Office Action. If an application is not allowed at either of those phases and a Final Office Action is issued, the Track I handling is over. If the Applicant wishes to continue prosecution with an RCE, and wants the accelerated examination to continue, there is a Track I RCE program for that with the same fees as the Track I Prioritized Examination program.

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
47.6097570-122.3321200
Phone: (206) 838-6400

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