USPTO Implements Prioritized Examination (Track 1)

The USPTO has been working for a while on its three-track program for utility patent prosecution. The multi-year backlog of applications yet to be examined is the driving force for the program. The program is also built on a key insight – that some patent applicants are seriously harmed by delays in prosecution while others would prefer additional delay if it allows them to also defer cash outlays for the prosecution and maintenance costs. The three track program would allow applicants to pay an additional fee to enter the accelerated track (Track 1). Alternatively, applicants may be able to delay paying certain fees by deferring examination in Track 3. It is expected that most applications would follow the standard course, which now defines Track 2.

Last week, the USPTO published a statement that it is moving forward with immediate implementation of Track 1 – "providing fast examination for applicants desiring it, upon payment of the applicable fee." The fee – $4,000 – is steep, but the PTO calculated that fee is sufficient to cover the examination costs. The Administration's proposed budget would allow for a discount for small entities, but that would need Congressional approval because of limits USPTO fee setting authority.

What does an applicant get for $4,000:

Under Track I prioritized examination, an application would be accorded special status and placed on the examiner's special docket throughout its entire course of prosecution before the examiner until a final disposition is reached in the application. The aggregate goal for handling applications under Track I prioritized examination would be to provide a final disposition within twelve months of prioritized status being granted. The final disposition for the twelve-month goal means: (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, within twelve months from the date prioritized status has been granted.

Additionally, the Office is planning to cap the number of prioritized examinations (if needed) in order to better ensure that a final disposition will be provided within twelve months.

In order to qualify for Track 1, the patent application must be an original utility or plant patent application filed electronically and have no more than four (4) independent claims and thirty (30) total claims. The prioritization will be terminated (without refund) if the applicant ever requests an extension of time to respond to an office action. Although recommended by the USPTO, no pre-filing search or analysis is required. The accelerated process is apparently available for continuation applications so long is the application is filed on or after the implementation date of the program.

Why $4,000: The USPTO has attempted to make clear that the $4,000 fee is set based on its "estimated average cost to the Office of performing the service" as required under 35 U.S.C. § 41(d)(2). According to the office, the fee is not "based upon any perceived level of participation" in the program. Adjustments to the fee are likely once the costs are better understood.

Documents:

78 thoughts on “USPTO Implements Prioritized Examination (Track 1)

  1. 78

    Large corporation and sole inventor file applications about the same time for overlapping inventions.

    Ah, I do so love the wacky corner cases where Joe Inventor and BigCo file on the same day for the exact same invention, and both are anxiously waiting for a Notice of Allowance with their fingers over the factory’s big red “Start Production” button so they can own the entire market forever. Because that’s such a common occurrence.

    If sole inventor filed first, will PTO examiner raise issue in prosecution of large corporation application?

    Of course he will, assuming he finds it. They’ll have a fun little thing called an “interference”, a procedure that already exists, already is virtually never used because of how improbable these fact scenarios are, and already is way too expensive for an individual inventor to afford.

    Besides which, the Tier 1 proposal already has a plan for what happens when the examiner finds unpublished prior art. Hint: BigCo doesn’t get its patent within the year.

  2. 77

    Below some point, the time limitation won’t be a problem. After that point, it will.

    The time limitation can only possibly be a problem if there aren’t enough people to process the applications in that time. It’s purely a staffing problem, and has nothing to do with whether the costs scale linearly.

    If an examiner gets half a week of time to deal with one application, 10,000 applications a year is only a hundred examiners plus associated support staff. Adding a hundred examiners to a staff of six thousand is so small there’s no way the incremental costs will get nonlinear by then.

    That point is 10,000 apps per year.

    You just pick random numbers out of documents and insist they support whatever your current assertion is, don’t you?

    “They had to put a limit on the number of Tier 1 applications because if they received too much mail the floor at the PTO would collapse. That limit is 10,000 apps per year.”

    They picked a number because it’s a pilot project and they don’t want it to get out of hand before they see how it works out. That’s all it is.

  3. 76

    Large corporation and sole inventor file applications about the same time for overlapping inventions. Large corporation pays the $ and gets his patent in a year and owns the market. Sole inventor is out of luck.

    If sole inventor filed first, will PTO examiner raise issue in prosecution of large corporation application?

  4. 75

    The incremental costs will not be linear even if the fixed costs are in order, as the examination is time-limited.

    Below some point, the time limitation won’t be a problem. After that point, it will. At some point the program needs to be truncated, if a fixed price is chosen.

    That point is 10,000 apps per year.

  5. 74

    trees, meet forest.

    Try digging just a little into context – you might save yourself some of your rather silly postings.

  6. 73

    It doesn’t matter how you book it. Barring a highly specific and generous tax credit or something, no amount of amortization or tax-deductibility will make an expense less than zero. If it did, all companies would realize huge profits from incurring huge expenses.

    What happens instead is that the tax deduction is an even closer approximation to zero than the booked expense, being as it is a proper fraction of that amount.

    And any way you slice it, somebody’s going to have to explain to somebody where he found the $40 million in this year’s budget for his department if he wants to save his job.

  7. 72

    It’s also tax deductible, meaning it’s less than 0.

    Well, yes, it’s eventually tax deductible, but patent prosecution expenses are generally capitalized and amortized over the useful life of the patent.

    Just so you know.

  8. 71

    would anyone notice? (answer: certainly someone would notice)
    would anyone care? (answer: someone will care)
    could there be consequences if someone cares? (answer: probably)

    If IBM’s patent prosecution department had $40 million in the budget for pointless griefing of other patent applicants, I’m sure they would have spent it by now.

    IBM didn’t get where it is today by letting people throw around tens of millions of dollars without a budget and a business case. Anybody with the bright idea of DOSing the Tier 1 program on that scale should expect to be terminated in short order. Probably immediately after being fired.

  9. 70

    ping Like the Green Petition program is so much like this one…

    It’s identical to this program, and even more susceptible to abuse, as far as the issues raised by BB are concerned.

  10. 68

    Like the Green Petition program is so much like this one…

    It would be trivial (and reasonable) for the PTO to simply add an additional rule

    And when or if they do, then BB’s comments can be dismissed. Until then, they are quite valid.

    Figures a mouthpiece like you would say exactly what you have said so for Sunshine.

  11. 67

    BB For 1000 applications, that would cost IBM 0.04% of their 2010 revenue of $99.9 Bn, which is, relatively speaking, a close approximation to 0. It’s also tax deductible, meaning it’s less than 0. And for that piddling sum the phrase “our examination groups” becomes quite literal.

    The Green Petition program costs less than 1/20th of this program and I’m not aware of any large corporation trying to abuse it in this fashion.

  12. 66

    BB More specifically, the question for the IBM suits is this: Can we flood this system with so many expedited cases that nobody else has a shot at it and we own the expedited examination program with respect to our examination groups?

    For 1000 applications, that would cost IBM 0.04% of their 2010 revenue of $99.9 Bn, which is, relatively speaking, a close approximation to 0. It’s also tax deductible, meaning it’s less than 0. And for that piddling sum the phrase “our examination groups” becomes quite literal.

    The other questions for “the suits” are:

    would anyone notice? (answer: certainly someone would notice)
    would anyone care? (answer: someone will care)
    could there be consequences if someone cares? (answer: probably)

    It would be trivial (and reasonable) for the PTO to simply add an additional rule, e.g., “no entity can file more than 20 such requests per year”.

  13. 65

    In order for the argument that the $4k fee is based on cost recovery to be at least colorable if not strictly lawful, a limited capacity must be DEFINED–which it has been, at 10,000/yr.

    Not necessarily. It’s completely possible that a patent office that already has its fixed costs (e.g. office space, computer networks) in order might have relatively linear incremental costs for examining additional applications. You need a certain amount of new people to spend a certain proportion of their time on each application. Twice as many applications might simply mean adding twice as many people, so the costs would scale.

    The PTO has likely done its research and found that the 10,000 limit will be EASILY met.

    More likely, the PTO has done its research and found that if it gets over 10,000 requests in the first year it won’t be able to ramp up throughput quickly enough to handle them. All they did was cap the worst-case scenario, in the event that some crazy person decides he has more money than brains to the tune of $40 million.

    Why would they care if the limit is met? It’ll be much more manageable for them if the limit is nowhere near met, which I confidently predict will be the case. Not at these prices.

  14. 64

    MM–

    In order for the argument that the $4k fee is based on cost recovery to be at least colorable if not strictly lawful, a limited capacity must be DEFINED–which it has been, at 10,000/yr.

    Further, the defined capacity must be chosen with the complete expectation that it will be used in its entirety.

    The PTO has likely done its research and found that the 10,000 limit will be EASILY met.

    So, assuming the limit is not increased, will we see a rush to file on January 1, 2012?

  15. 63

    What is relevant is how they can use this government-tilted playing field to their advantage.

    Bingo – we have a winner.

    “Small” entities will also be “absorbing the capacity” right along with the large entities

    Bingo – we have a whiner.

  16. 61

    “NOW do you guys get it?”

    What? That you’re on the same side as crazy boundy?

    I got that a long time ago.

    That said, we all have known for awhile now that it is probably extra-statutory for them to do this. The thing is, who is going to call them on it? Probably nobody. If anyone could even get standing in court, which they probably can’t, the courts would probably defer to the PTO’s rulemaking authority.

    But hey, good luck, maybe you can get a tard for a judge, like the guys in Tafas.

  17. 60

    “That said, can anybody here comment on PTO’s statutory authority to charge $4,000 for doing the same job it is supposed to do under the statutory fees provided in Section 41? ”

    Here’s a thought, it isn’t the “same job”. It is a rush job. Plain and simple.

  18. 59

    Thanks for the info but my real question is why did they pass that rule like that to reign in the grand juries instead of keeping them watching over and embarrassing politicians? Seems like they were instrumental in the formation of our country then we just go and toss them aside.

  19. 57

    No apology needed for me, Moonbeams. I was just afraid you might be sittin’ on the pony backwards, as we all do from time to time.

    Of course, it’s all crass speculation and just my skeptic’s opinion at this point and will be until 6 months after the system takes effect, but the nature of big corporations being what it is and there being an admitted limited capacity for this program, seems to me the question is not whether any specific invention is worth the $4000. The worth of the invention vis-a-vis the $4000 fee is irrelevant to the heavy hitters.

    What is relevant is how they can use this government-tilted playing field to their advantage.

    More specifically, the question for the IBM suits is this: Can we flood this system with so many expedited cases that nobody else has a shot at it and we own the expedited examination program with respect to our examination groups?

    For 1000 applications, that would cost IBM 0.04% of their 2010 revenue of $99.9 Bn, which is, relatively speaking, a close approximation to 0. It’s also tax deductible, meaning it’s less than 0. And for that piddling sum the phrase “our examination groups” becomes quite literal.

    This is simply a plan that allows large corporations to own the PTO with above the table bribes.

    Throw in a couple more heavy hitters and the pay-for-play approach becomes a very local “public” benefit. Like I say, check Kappos’ Rolladex if you want to know who the winners will be.

    Speaking of bribes, there was once a PTO program where corporations could make cash “contributions” to some sort of examiner training program. Does anyone know if that program still exists? My inquiries to PTO have been ignored, even though I said “please.”

    PTO: Patent and Trademark Oligarchy.

  20. 56

    Ron–

    The substance of your post is what I was hinting at in my earlier posts on the legality of the fee, the rate of change of the backlog pendency, the PTO having no idea what it is doing, and the nature of the activity that is examination.

    A sincere thanks for putting in the time to put meat on the bones.

    NOW do you guys get it?

    Boundy, where the heck are you? Surely you’ve got lots of time these days…

  21. 55

    BB, I definitely did confuse matters in my earlier post and I apologize to you and Ron for that. I think it is possible that “capacity will be absorbed” but I don’t think it will be absorbed to the detriment of impoverished inventors.

    “Small” entities will also be “absorbing the capacity” right along with the large entities. In fact, I doubt you will see any large entities filing all or even >50%of their applications as accelerated track applications, but you will see many small entities doing just that (at least in the tech sectors and contexts where quick patents are deemed desirable).

  22. 54

    You misinterpreted what Ron meant by “club” by 180.

    The club he is talking about is the one whose members can afford to spend, and will spend, $80,000 per year just in expedited examination fees. You know, the ones who know a good deal — and a good bribe — when they see it. The top-shelf PTO customers Kappos works for.

    IBM alone will absorb all of the capacity the new pay-to-play system has.

    So the answer to your question of how many people are in the club: check Kappos’ rolladex.

  23. 51

    Where are you “practicing” exactly?

    In that strange universe where one minus one-third equals two-thirds, and two-thirds isn’t very different from three-quarters.

    Why? Where are you practicing exactly?

  24. 50

    You are clearly not a lawyer.

    In the traditional 1/3, 1/3, 1/3 model that leveraged/pyramidal firms use, 1/3 of the associate’s collections go to the associate as salary, 1/3 goes to overhead, and 1/3 goes to the partners.

    Where are you “practicing” exactly?

  25. 49

    so it ain’t exactly a secret to the associates what percentage of their billables/collections they are getting as salary.

    Okay, fine, then “only” 2/3 of the cost to get your application drafted is non-lawyer overhead. What a huge difference in efficiency from 3/4. And that’s assuming firms adhere to the model, which is only an idealized goal and isn’t the law or anything.

  26. 48

    Is this proposed rule really an instrument for providing big corporate patentees their own accelerated examination division within the PTO, practically excluding small entities from the “club”?

    What “club” is that? The “club” of dirt poor inventors with valuable ideas who desperately need a patent granted within one year of filing but can’t afford the $4,000 fee?

    How many people are in that club?

    Answer: zero.

    Thanks for playing.

  27. 47

    “Ask a partner how many billable hours a year you’d have to realize just for the firm to break even. If he’s willing to part with that information, divide those billings by your salary and act suitably surprised.”

    Most traditionally leveraged (i.e. pyramidal) firms are running the basic 1/3, 1/3, 1/3 model, so it ain’t exactly a secret to the associates what percentage of their billables/collections they are getting as salary.

    Associate salaries are by far the biggest expense for any leveraged firm. It’s hard to imagine that any firm has non-attorney expenses that are 3/4 of their costs.

    Maybe some do. But I never worked anywhere like that.

  28. 46

    Not 3/4.

    Look at all the expensive rented office space, the salaries of every non-billing person, spending on computers, blackberries, office phones, office supplies, off-site storage, travel, wining and dining clients, the list goes on. Also, partners don’t take a salary, but they do generate expenses, which skews the ratio even more.

    Ask a partner how many billable hours a year you’d have to realize just for the firm to break even. If he’s willing to part with that information, divide those billings by your salary and act suitably surprised.

  29. 45

    “How much of a law firm’s operating cost would you say is non-lawyer overhead?”

    Not 3/4.

    What is it in your “firm”?

    Lulz

  30. 42

    I think I’ll file a class action lawsuit representing independent inventors against the Patent Office.

  31. 41

    Are you telling me that 3/4 of the cost to examine a patent application is non-examining staff overhead?

    How much of a law firm’s operating cost would you say is non-lawyer overhead?

    Bonus points if you recommend they lay some people off.

  32. 40

    This proclamation is remarkable given that for years, the Office encountered no problems finding the statutory authority to discount RCE application fees for small entities (currently $405 – half of the $810 fee for large entity).

    Maybe they were looking in 35 USC 132 (b), which reads in pertinent part: “The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1) of this title.”

    They not only have the authority to discount RCE fees for small entities, they don’t have the authority not to.

  33. 39

    “You getting the picture?”

    Uhm, no. Are you telling me that 3/4 of the cost to examine a patent application is non-examining staff overhead? If so, the PTO is badly in need of layoffs.

  34. 38

    For small entities, Track 1 is significantly less expensive than the current accelerated program. The $2000 fee for small entities would barely cover a pre-examination search, and certainly would not cover the cost of drafting an AESD on top of the cost of the search. (See my post above.) Patent searchers and patent attorneys generally do not offer a small entity discount. (Some apply a premium to small entities.)

  35. 37

    This includes having RCE’s responded to, and receiving a decision from the BPAI.

    Lol Lol Lol

    No wait….

    Lol Lol Lol Lol Lol Lol Lol Lol Lol Lol Lol Lol

    Ah, Iza love the smell of laughter in the morning.

    (I know, it dont have the same ring as napalm, but Iza be fresh out of napalm).

  36. 35

    “4K to get to a final OA?? That’s no resolution to the slip shod examination you can experience to get there.”

    This. This program does not seem worth it at all, unless the app stays in the fast lane during the entire length of prosecution. This includes having RCE’s responded to, and receiving a decision from the BPAI.

  37. 34

    4K to get to a final OA?? That’s no resolution to the slip shod examination you can experience to get there.

  38. 33

    You might want to check again, ping. My man 6 was asking about grand juries. I’m pretty sure they don’t play in Civil matters.

  39. 30

    I done esplain this already.

    This be but creative accounting to get money. As I done said, Congress only skims that which comes in over budget – so ya raise the budget line with smoke and mirrors. So what?

    Sure, teh big corp gets theirs first (examination). But they havent messed with priority yet, and that is the more important driver, no?

  40. 29

    The USPTO would like to move forward with Track 1, but for now this is still a proposal. Written comments will be accepted through March 7 and there is no effective date.

    As I wrote on my article:

    link to pharmapatentsblog.com

    the $4000 is less than what it costs to file a request for accelerated examination, so I don’t think it’s out of line, although the 12 month time frame is explained to be an overall goal with no guarantees (big surprise there).

    The biggest problem is fee diversion. The PTO’s calculation that it needs to charge $4000 to process Track 1 applications without impacting examination of other applications is meaningless unless Congress lets the PTO keep the full amount of the fees it collects.

    I wrote more about the PTO budget woes here:
    link to pharmapatentsblog.com

    (scintillating reading, large amounts of coffee required!)

  41. 27

    Is this proposed rule really an instrument for providing big corporate patentees their own accelerated examination division within the PTO, practically excluding small entities from the “club”? You have all seen comments asking that the PTO discount by 50% the small entity accelerated fee for Track I, as it does in other fee items. The Notice, however, finds an excuse to snub small entities by citing lack of statutory authority: “Under the Office’s current statutory authority, the Office is not permitted to discount the fee for small entity applicants.” 76 Fed. Reg. 6370. This proclamation is remarkable given that for years, the Office encountered no problems finding the statutory authority to discount RCE application fees for small entities (currently $405 – half of the $810 fee for large entity). The Authority to set RCE fees based on costs to the Office is found in … you guessed it: Section 41(d)(2) – the same section the Office now invokes for its authority to charge $4000 extra for Track I service.

    How more transparent can the bias at the PTO towards big corporate patentees be?

  42. 26

    “How long would it be before other “midlevel and more modest” payment tiers are created in response to “public demand”? Couldn’t they be equally supported by the same logic of Section 41(d)(2) “authority,” gutting completely the statutory fee structure? ”

    In case you haven’t noticed yet, our governmentlol is a complete circus. If I wasn’t so young I’d probably know that it has been for a long time. But I’m not sure, since I didn’t live through most of it and have to look back on it. Seems like it started out good, and only recently really started going downhill.

  43. 25

    “Cepts 6 – the rationale given is only for the examiner – not the rest of the infrastructure.”

    Where do you see that tard? It says “examination” in D’s post. That includes everything tard.

  44. 23

    I’m all for giving the PTO much more resources to do its job. For starters, it should be given immediately the diverted $750M which applicants of the 750,000 pending unexamined applications already paid. I support legislation that would do that.

    That said, can anybody here comment on PTO’s statutory authority to charge $4,000 for doing the same job it is supposed to do under the statutory fees provided in Section 41? The Notice invokes Section 42(d)(2) as its authority. However, this statute provides as follows:

    41(d)(2) “OTHER FEES. – The Director shall establish fees for all other processing, services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such processing, services; or materials…

    Isn’t the processing of applications under both tracks already “specified in this section” [in Section 41(a-c)]? Wouldn’t the new examiners hired by the Office for Track I be doing exactly what other examiners are doing? The fees for that work are already specified in Section 41(a)-(c). Moreover, the $4,000 extra combines to a total revenue that by definition is more than the “cost to the Office of such processing” because it will be used as cash to hire and train new examiners – an expense that must be amortized over many years, just as were the expenses for hiring the existing examiners. Under what established accounting standards does one define costs as incremental cash expenditures that are not amortized over time? If the Office charges according to cost on both types of examination tracks, and does exactly the same work, how could one application cost a total of $7500 and the other $3,500?

    If this logic is allowed to prevail, wouldn’t Section 41 be rendered meaningless? In that case, couldn’t one ultimately fund the PTO fully and solely on 41(d)(2) “authority”? Doesn’t this create the logical conclusion that the less funds from fees the Office will be allowed to retain (more fee diversion), the higher the Accelerated fees it would be able to collect by this logic?

    Isn’t the sole PTO authority created by statute for addressing long pendency problems embodied in the Patent Term Adjustment provisions of Section 154? Do any of you get the sense that this tiered system is designed to avoid having to deal with the exploding backlog and the diversion of fees?: “Too bad our pendency is long. It is not like you have no other option now: If you really need your patent issued sooner than 5 years, just pay extra for Track I”. Is this a way of allowing the backlog to grow permanently? All the PTO would need to argue is that “our statistics show that only 2,000 applicants elect to accelerate their applications in Track I. This must mean that our current pendency does not really matter to 99.9% of applicants.

    How long would it be before other “midlevel and more modest” payment tiers are created in response to “public demand”? Couldn’t they be equally supported by the same logic of Section 41(d)(2) “authority,” gutting completely the statutory fee structure?

    Can the PTO management be serious? Or is it merely a cry for (well deserved) funding help?

  45. 22

    Cepts 6 – the rationale given is only for the examiner – not the rest of the infrastructure.

    But like I done told that other fella – the Office finally gettin smarter about how itza doin its “budgetin” – IF COngress wont let them keep what is over the budget line, then just move that budget line up.

    Honestly (so to speak), what took the Office this long to figure this out?

  46. 20

    Well, I was reading a paper about how “if it’s not a runaway then it isn’t a grand jury”. Explaining how the grand jury went from its glory days of 12 people that sparked the american revolution by not indicting american citizens who were rebelling and indicting british soldiers for supposedly fin with the colonists, down to nothing more than an unconstitutional rubber stamp.

    link to constitution.org

    And therein, they explain that around 1900 grand juries were still indicting public officials etc. rooting out corruption etc. However, when the year came to 1947? (notably right before the 1952 patent act fiasco) congress had a subcommittee make up the federal rules of civil procedure out of thin air and in clear violation of the constitution in many areas, and thereby neutered the grand jury with rule 6. Specifically, it appears that the courts, thanks to rule 6, deny grand juries the ability to go out and investigate and collect evidence etc, as well as deny them the ability of “presentation”, aka an indictment not signed off on by a prosecutor. Of course, they use due process in correlation with rule 6 to deny the grand jury the ability of “presentation”.

    So, my question is, whatever it was about rule 6 that fed the grand jury over, why was it enacted?

    I mean, to me rule 6 doesn’t seem to mess with them at all.

    link to law.cornell.edu

    So I’m guessing maybe the numbering of the rules changed a bit since that paper was published?

    I don’t know all the details, but I’m wanting to know why congress would get rid of the old school styled what we now call “runaway” grand jury to protect politicians from being exposed by grand jury investigations. I mean, is that the only reason? And if so, how would the american people have tolerated that?

  47. 19

    SPE’s, Directors, buildings, LIE’s, formality examiners, all the different departments we have that aren’t examining, lawlyers, outreach programs, community day, heating buildings, IT, computers, monitors, computer staff, computer support staff …

    You getting the picture?

    In any event, there was a paper D made an article about that broke it all down.

  48. 18

    Paulie,\\You be way way out in the field.

    also pay a few hundred more for a thorough interview before the 2d action to hopefully avoid having to file an RCE?

    As if a “thorough” interview will stop an RCE…? D R E A M I N.

    isn’t there still an incentive for an examiner to take up an RCE on an application which that examiner has already worked on twice before versus the greater work in starting from scratch on a new application?

    Um, no – that’s why they set the rules as they do so az to get new apps a crackin first plus the RCE’s go to limbo with no incentive to move em.

    Haven’t ya been payin attention at all Paulie?

  49. 17

    The $4000 fee under Track 1 is less than the cost of proceeding under the current accelerated program ($180 petition fee PLUS a pre-examination search ($2000) PLUS reviewing the results of the search PLUS drafting an accelerated examination support document, among other things), but more advantageous since Track 1 does not require making statements about the prior art.

  50. 16

    this is a good proposal. $4000 would be reasonable if the idea is worth protecting and if the application could get through examination alot quicker.

  51. 15

    Would someone spending $4K extra for a faster prosecution (to a 2d action) not logically also pay a few hundred more for a thorough interview before the 2d action to hopefully avoid having to file an RCE?
    Also, how long are first office actions on RCE’s taking now? Even with their new system, isn’t there still an incentive for an examiner to take up an RCE on an application which that examiner has already worked on twice before versus the greater work in starting from scratch on a new application?

  52. 14

    Mark… completely irrelevant data. Those applications were filed under the current ‘no negative for crappy initial claims’ rules. A better data set is the accelerated examination pool of applicantions. Less than 20% of them of them are dismissed, abandoned or denied on their merits.

  53. 13

    And by the way, if you really want those “small” “poor” inventors and you believe that they are the heart and soul of the American economy, then you should pay the filing fee for them, in exchange for the future prosecution work (or better yet — a share of the profits).

    More yammering from the windmill chasin rye field standing prof lovin foo.

    I does my share of pro bono work exactly in that mindset. Howza bouts you?

    Yeah, thought so.

  54. 12

    until after Palin gets elected in 2012

    Lolz – instant loss of all credibility for ya Babs. Those be some mighty serious drugs ya be takin.

  55. 11

    Only about 33% of original applications are allowed by the second office action. That means there is a 2/3 chance that your application will get a final rejection (or be abandoned) and then lose its special status. It then might take several years before you get a response to your RCE.

  56. 10

    “Additionally, the Office is planning to cap the number of prioritized examinations (if needed) in order to better ensure that a final disposition will be provided within twelve months.”

    Which is another way of saying Kappos just brought home the bacon for IBM, compensation deferred until after Palin gets elected in 2012.

    We’ll need FOIA to see who is getting in under the cap that shouldn’t be, and even then the information will be out of bounds as proprietary.

    This reeks.

  57. 9

    Not sure what all the fuss is about – the priority still stems from filing date – no matter how “quick” the examination is.

    In fact, in certain arts, this quickness (and the loss of PTA) can add up to some big bucks.

    Anything in this track limiting Continuations, Divisionals and Continuations-in-Part? If not, this may be worth the quick strike to establish a real-life patent and then use the other mechanisms for their legal benefits.

    Just an observation.

  58. 8

    Finally, thanks to Dave Kappos, the U.S. has the option of expidited examination for those who actually need it* without having only the burdensome and dangerous requirements of a “Petition To Make Special.”

    Fortunately this project was not deterred by nonsense arguments that large companies filing thousands of patent applications [which they keep trying to obtain more cheaply] were going to pay millions more to broadly use and flood this system.

    *Such as new technology start-ups or spin-offs that need patents to help get venture capital or other needed investment capital.

  59. 7

    For the patent agents out there who are having difficulty understanding the extra fees, imagine two clients, each with the same amount of work, and each more than capable of paying their bills on time (and then some). The difference is that client A always needs its projects accomplished in three days and tends to give you the projects on Friday afternoon. The other client gives you a month notice.

    Assuming you have the freedom to negotiate fees independently for each client, which client do you charge more?

    And by the way, if you really want those “small” “poor” inventors and you believe that they are the heart and soul of the American economy, then you should pay the filing fee for them, in exchange for the future prosecution work (or better yet — a share of the profits).

  60. 6

    Hey lawl dudes, anyone know off the top of their heads, and are willing to share with the rest of us, why federal rule of civil procedure 6 was enacted, thereby apparently largely restraining the grand jury’s powers?

    Presumably you’re talking about the federal rules of criminal procedure, but rule 6 is pretty long. Do you have a particular concern?

  61. 5

    Assuming the average time for disposal throughout all arts is 20 hours, and the average hourly wage of the examining corps is $50/hr (which may even be a little high given the relative inexperience of the examining corps), that’s about $1k to examine an application. What’s the other $3k for?

  62. 4

    he patent application must be an original utility or plant patent application filed electronically and have no more than four (4) independent claims and thirty (30) total claims.

    Interesting. That’s another advantage over the current accelerated programs (including the Green Petition program), where you are limited to 3 indies, 20 total, and no multiple dependent claims.

    In case of restriction, is the applicant precluded from traversing (as is the case with the other accelerated programs)?

  63. 3

    Since the PTO is offering different service levels for priority, they should consider offering different service levels for search and examination as well, with a similarly varied pricing structure.

  64. 2

    Uh, boy. Here it is. Government services by the rich for the rich.

    I’m gonna’ burst a vessel on this one for sure.

    Kappos: There is the quick, and there is the dead. The choice is yours, assuming you’re willing to make a small contribution.

  65. 1

    Hey lawl dudes, anyone know off the top of their heads, and are willing to share with the rest of us, why federal rule of civil procedure 6 was enacted, thereby apparently largely restraining the grand jury’s powers?

    “The fee – $4,000 – is steep, but the PTO calculated that fee is sufficient to cover the examination costs. ”

    In other words, they read the same paper as the rest of us that determined that the amount it costs to examine an application today is around 4k.

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