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.