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Kappos Opts for Fast Track Examination Over 3-Track- for Now

February 16, 2011

Director David Kappos continues to shake up past procedures at the U.S. Patent & Trademark Office ("Patent Office") in an effort to give applicants greater control over the length of duration of the patent examination process, as well as cut down on the current backlog of applications.  Last summer, the Patent Office proposed a new examination process called "3-Track" that would give applicants three choices in how their application is examined:  (I) accelerated examination, (II) delayed examination, and (III) normal examination. Due to the overwhelming support from the patent community for the accelerated track ("Track I"), on February 4, 2011, the Patent Office proposed to move forward with this approach alone for now.  Track I allows an applicant to pay an additional priority fee of $4,000 (in addition to the required filing fees) in order for its application to be afforded prioritized examination with the goal of reaching a final disposition1 within one (1) year from the date of filing.2 The Patent Office has suggested that requests for prioritized examination be limited to a maximum of 10,000 applications for the first year and has indicated that applications currently pending will not be delayed by this initiative. To further this program, the Patent Office is anticipating hiring additional examiners to cover the increased workload.  Before officially implementing Track I, however, the Patent Office will accept written comments from the public until March 7, 2011.3

Under normal Patent Office procedures, new patent applications are taken up for examination in the order in which they are filed, with an average pendency until the first office action is issued of approximately two and a half years.4 As we previously reported,5 the Patent Office has already implemented procedures that allow applicants of qualifying "green technologies" to petition for special status without having to pay any additional fees or file an "examination support document."6 The new Track I initiative, however, now allows any application to receive expedited examination regardless of the application's subject matter.

In order to qualify for this prioritized examination, the application must meet the following requirements:

  • Be an original utility or plant nonprovisional application;
  • Be electronically filed;
  • Pay the required fees for requesting prioritized examination;7 and
  • Contain no more than four (4) independent claims and no more than thirty (30) total claims.

Notably absent from this list are the requirements of providing a copy of a search report, first office action from a foreign patent office, and a supplemental search from a participating intellectual property granting office where applicable, all of which were requirements in the original proposal last summer.

Additionally, because the applicant must make the request for Track I prioritization and pay the required fees at the time of filing of the application, applicants having applications pending at the time this new initiative is officially enacted will not be able to request prioritization for those applications. With that said, under the new proposal, newly filed continuation applications that are filed on or after the date of implementation will be eligible for Track I status. Therefore, if an applicant wishes to procure a filing date before implementation of the Track I procedures for an application not yet filed, the applicant may proceed with filing an application prior to implementation, and then file a new continuation application claiming the benefit of their original filing. Similarly, if an application is currently pending and the applicant wishes to expedite that application, after enactment of the Track I procedure, the applicant can file a continuation application and request expedited status for that application. In each of these cases, the applicant gains the benefit of the earlier priority date at the cost of paying additional filing fees.

As the proposed initiative will be limited to the first 10,000 that apply, it is imperative for applicants to review their portfolio and determine which, if any, applications should be accelerated. Applicants should carefully weigh the initiative's benefits against the requirements noted above – most notably, the claim limitations and increased fees.


1 Final disposition 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, (5) filing of a request for continued examination, or (6) abandonment.
2 See Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, 76 Fed. Reg. 6369-76 (February 4, 2011).
3 Comments may be submitted via email to track_I_comments@uspto.gov. Commentators should note that all comments will be publicly available, so any information the commentator does not wish to be public should not be included in the comments.
4 See Press Release from the Patent Office, located here ("Patent applications are normally taken up for examination in the order that they are filed.").
5 Director Kappos Gives Early Holiday Present to Patent Owners of "Green Technology."
6 An examination support document ("ESD") is essentially an applicant produced Office Action. The ESD must include: (a) a statement that a prior art search was done, as well as the fields of search and search logic, (b) a listing of the references deemed most closely related to the pending claims, (c) an identification in each reference where each element of the claim can be found, (d) a detailed explanation pointing out why each independent claim is allowable over the cited art, and (e) a showing where each limitation of each claim is found in the specification of the application.
7 The Patent Office is currently suggesting a fee of $4,000 for both large and small entities. The Patent Office is not permitted to discount the fee for small entity applicants without new legislation. The Patent Office has indicated that if new legislation is passed, the fees will be $4,800 for large entities and $2,400 for small entities.