Anticipate This!™ | Patent and Trademark Law Blog

USPTO Proposal to Establish Three Patent Processing Tracks.

Posted in Practice Commentary by Jake Ward on June 7, 2010

Per this press release at the USPTO last week.

USPTO Proposes to Establish Three Patent Processing Tracks

Initiative would provide applicants greater control over the speed of patent examination, reduce pendency and enhance work sharing between intellectual property offices

Public meeting to be held on July 20; comments welcome

WASHINGTON – The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking public comment on a proposed new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process. The new “Three-Track” program aims both to provide applicants with the timing of examination they need and to reduce pendency of patent applications.

“We recognize that the traditional ‘one-size-fits-all’ examination timing may not work for all applicants,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By allowing applicants greater control over the timing of examination, the USPTO will be able to deploy its resources to better meet the needs of innovators. We look forward to input from the public as we shape this proposal.”

Under the proposed “Three-Track” initiative, for applications filed first in the United States, an applicant may request:

Track I: prioritized examination

Track II: traditional examination under the current procedures

Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.

Under Track I as proposed, applicants that request prioritized examination would be required to pay a fee set to recover the cost to the agency of maintaining the planned pendency of non-prioritized applications while expediting the examination of the prioritized application. Input from the public on the technologies where the prioritization requests are most likely will be useful in setting this fee. The goals for handling applications in this queue would be to provide a first Office action on the merits within four months and a final disposition within 12 months of prioritized status being granted.

For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USPTO until the agency receives a copy of the search report, if any, and first office action from the foreign office as well as an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO. Following or concurrent with the submission of the foreign office action and reply, the applicant may request prioritized examination or obtain processing under the current procedure. This proposal would increase the efficiency of the examination of these applications by avoiding or reducing duplication of efforts by the office of first filing and the USPTO.

Overall pendency would be decreased in four ways:

1.increased resources in Track I would result in increased output

2.reuse of search and examination work done by other offices would result in greater efficiency

3.applicants who chose Track III because their applications were of questionable value might ultimately not pursue their application examination.

4.applicants with applications first filed abroad might ultimately not pursue their application examination.

Public input is also requested on a proposal to provide for supplemental searches performed by other intellectual property granting offices at an applicant’s request.

A public meeting will be held on July 20 at 1:30 p.m. at the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia. Those interested in attending the meeting must register by 5:00 p.m. (EDT) July 16.

Written comments must be submitted by August 20, 2010.

Additional details on the program will be available in the June 4, 2010 edition of the Federal Register.

For non-press inquiries, contact Robert A. Clarke, Deputy Director, Office of Patent Legal Administration by phone at (571)272-7735 or by e-mail,

As specifically noted in the July 4, 2010 edition of the Federal Register, comments on one or more of the following 31 questions are being solicited by the USPTO.

    1. Should the USPTO proceed with any efforts to enhance applicant control of the timing of examination?

    2. Are the three tracks above the most important tracks for innovators?

    3. Taking into account possible efficiency concerns associated with providing too many examination tracks, should more than three tracks be provided?

    4. Do you support the USPTO creating a single queue for examination of all applications accelerated or prioritized (e.g., any application granted special status or any prioritized application under this
proposal)?  This would place applications made special under the “green” technology initiative, the accelerated examination procedure and this proposal in a single queue. For this question assume that a harmonized track would permit the USPTO to provide more refined and up-to-date statistics on performance within this track. This would allow users to have a good estimate on when an application would be examined if the applicant requested prioritized examination.

   5. Should an applicant who requested prioritized examination of an application prior to filing of a request for continued examination (RCE) be required to request prioritized examination and pay the required fee again on filing of an RCE? For this question assume that the fee for prioritized examination would need to be increased above the current RCE fee to make sure that sufficient resources are available to avoid pendency increases of the non-prioritized applications.

    6. Should prioritized examination be available at any time during examination or appeal to the Board of Patent Appeals and Interferences (BPAI)?

    7. Should the number of claims permitted in a prioritized application be limited? What should the limit be?

    8. Should other requirements for use of the prioritized track be considered, such as limiting the use of extensions of time?

    9. Should prioritized applications be published as patent application publications shortly after the request for prioritization is granted? How often would this option be chosen?

    10. Should the USPTO provide an applicant-controlled up to 30-month queue prior to docketing for examination as an option for non-continuing applications? How often would this option be chosen?

    11. Should eighteen-month patent application publication be required for any application in which the 30-month queue is requested?

    12. Should the patent term adjustment (PTA) offset applied to applicant-requested delay be limited to the delay beyond the aggregate USPTO pendency to a first Office action on the merits?

    13. Should the USPTO suspend prosecution of non-continuing, non-USPTO first-filed applications to await submission of the search report and first action on the merits by the foreign office and reply in USPTO format?

    14. Should the PTA accrued during a suspension of prosecution to await the foreign action and reply be offset? If so, should that offset be linked to the period beyond average current backlogs to first Office action on the merits in the traditional queue?

    15. Should a reply to the office of first filing office action, filed in the counterpart application filed at the USPTO as if it were a reply to a USPTO Office action, be required prior to USPTO examination
of the counterpart application?

    16. Should the requirement to delay USPTO examination pending the provision of a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action be limited to where the office of first filing has qualified as an International Searching Authority?

    17. Should the requirement to provide a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action in the USPTO application be limited to where the USPTO application will be published as a patent application publication?

    18. Should there be a concern that many applicants that currently file first in another office would file first at the USPTO to avoid the delay and requirements proposed by this notice? How often would this occur?

    19. How often do applicants abandon foreign filed applications prior to an action on the merits in the foreign filed application when the foreign filed application is relied upon for foreign priority in a U.S. application? Would applicants expect to increase that number, if the three track proposal is adopted?

    20. Should the national stage of an international application that designated more than the United States be treated as a USPTO first-filed application or a non-USPTO first-filed application, or should it be treated as a continuing application?

    21. Should the USPTO offer supplemental searches by IPGOs as an optional service?

    22. Should the USPTO facilitate the supplemental search system by receiving the request for supplemental search and fee and transmitting the application and fee to the IPGO? Should the USPTO merely provide criteria for the applicant to seek supplemental searches directly from the IPGO?

    23. Would supplemental searches be more likely to be requested in certain technologies? If so, which ones and how often?

    24. Which IPGO should be expected to be in high demand for providing the service, and by how much? Does this depend on technology?

    25. Is there a range of fees that would be appropriate to charge for supplemental searches?

    26. What level of quality should be expected? Should the USPTO enter into agreements that would require quality assurances of the work performed by the other IPGO?

    27. Should the search be required to be conducted based on the U.S. prior art standards?

    28. Should the scope of the search be recorded and transmitted?

    29. What language should the search report be transmitted in?

    30. Should the search report be required in a short period after filing, e.g., within six months of filing?

    31. How best should access to the application be provided to the IPGO?

Comments are open.  Any thoughts from our readership on the proposed three-track patent processing system?

3 Responses

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  1. NAWAB IKRAMULLAH KHAN said, on June 7, 2010 at 8:47 am


  2. NAWAB IKRAMULLAH KHAN said, on June 7, 2010 at 8:50 am


  3. Gena777 said, on June 15, 2010 at 7:57 pm

    This is an indication that Director Kappos understands that different patent applications should be treated differently — implementing this concept could contribute to increased efficiency at the USPTO. Though I’m not yet convinced that fast/ordinary/delayed is the ideal system for categorizing patent applications, at least it’s a step in the right direction. I believe that the USPTO needs to start reviewing several different types of multi-tiered approaches to patent examination, because the traditional one-size-fits-all approach doesn’t meet the needs of today’s environment. If Congress ever actually passes a patent reform bill with teeth, then maybe we’ll see significant change for the better in patent law someday.

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