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The United States Patent and Trademark Office (“USPTO”) is seeking public comment on a proposed three-track patent examination initiative that would provide applicants with greater control over the speed at which their applications are examined.

The proposed initiative aims to reduce overall pendency of patent applications by providing applicants with alternative timing systems for the examination of their patent applications. The current backlog is approximately 750,000 patent applications with an average pendency of 35 months from filing until a patent is issued or the application is abandoned.

According to the proposed initiative, for patent applications filed in the USPTO that are not based on a prior foreign-filed application, applicants would be able to choose between “prioritized” examination (Track I), ordinary examination (Track II), and an applicant-controlled delay in docketing for examination of up to 30 months (Track III).

Under the proposed Track I, after payment of an unspecified “cost recovery” fee, applications would be placed in the same queue for examination as other priority applications, such as those in the accelerated examination program, but without the search and analysis required by the accelerated examination program. One goal of the Track I proposal is to provide a final disposition within twelve months of prioritized status being granted. The USPTO is also considering limiting the number of claims in a Track I application to four independent and thirty claims total. Early publication may also be required such that the application would publish shortly after a request for prioritization is granted, or eighteen months from the earliest filing date claimed, whichever is earlier.

Track III would be available for non-continuing, non-provisional applications first filed in the USPTO. An application granted Track III status would be placed in a queue for the applicant to request examination and pay the examination fee with a surcharge up to 30 months from the earliest filing date (including any relied upon provisional application). Track III would allow an applicant additional time to decide if the invention is commercially viable and if it is worth pursuing patent protection.

Applications for which neither prioritization nor an applicant-controlled delay in examination is requested would be processed traditionally under Track II, except that applicants may request Track I status at any time if the criteria are met, and, for any non-continuing application, applicants may request Track III status prior to commencement of examination on the merits.

For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USTPO until the USPTO receives a copy of the search report, if any, and a first office action from the foreign office and an appropriate reply to the foreign office action. Following or concurrently with the submission of the search report, foreign office action and reply, the applicant could request prioritized examination under Track I. Otherwise, such applications would be processed under the current procedures.

The USPTO anticipates the proposed three-track initiative will reduce overall pendency in four ways:

Nevertheless, there is a possibility that foreign filers may choose to file first with the USPTO to take advantage of the prioritization track and/or avoid the delay and requirements of this proposal, resulting in a net increase in applications filed with the USPTO.

Many questions remain, and the USPTO has requested public input to help finalize the three-tier examination plans. The June 4, 2010 edition of the Federal Register has a list of 33 specific questions, including additional details on the program.

A public meeting will be held on July 20, 2010 and written comments must be submitted by August 20, 2010.

If you have any questions, please contact one of our patent attorneys.

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