USPTO Releases More Information on Three-Track Examination Initiative

The U.S. Patent & Trademark Office released additional details on February 2, 2011, regarding their recently proposed “Three-Track” patent examination initiative. The PTO is seeking public comments for a 30 day period beginning with the proposals forthcoming publication in the Federal Register.

In its original proposal, published in June 2010 (75 Fed. Reg. 31,763), the Patent Office indicated that under the Three-Track proposal an applicant could (1) request expedited examination (Track I); (2) could request a delay of up to 30 months in the examination docketing of a non-continuing application (Track III); or (3) proceed under current practices (Track II). It was announced that different fees would apply to different tracks, but no fee schedule was announced.


In last week’s press release, the Patent Office proposed certain requirements for entry into the expedited examination queue, including: (1) payment of filing, search, and examination fees plus an additional $4,000 fee (no reduced for small entities) to cover the costs to conduct early examination without delaying examination of other applications; (2) limiting claims to four independent claims and 30 total claims (payment of excess claim fees still required); and (3) filing of a complete application (no filing with missing parts) electronically using the PTO Electronic Filing System (EFS-WEB). [Note: If you’re not filing electronically already, you really should. It’s faster, safer, and more reliable than fax or paper filing.] The PTO release stated that, if given statutory authority to provide reduced fees for small entities, the prioritized examination fees would be $4,800 for large entities and $2,400 for small entities.

The notice also states that applications in Track I will be terminated from the prioritized examination system if the applicant files an extension of time (e.g., for filing a response to an Office Action) or files a Request for Continued Examination.

Track II and Track III fees are not discussed in the press release or proposal. Although it is not discussed, fees for Track II would presumably be unchanged. It has been widely speculated that the Fees for Track III would be the same as for Track II, but that the filing fee would be due at the time of filing with the search and examination fees being due when an applicant decides to have the application put in the queue for examination.

Citing broad support for its Three-Track initiative, the PTO appears to be trying to fast-track adoption of the new system. For obvious reasons, current PTO practice does not provide a way for the PTO to prioritize or “triage” patent applications. Although the proposed system will certainly have bumps, it seems like a reasonable way to allow patent applicants to determine which of their applications are high or low priority. Applicants needing prompt examination (e.g., for a popular product already being imitated) can expedite examination and proceed to enforcement. Applicants who are unsure of the value of a patent application (e.g., for a product that is not yet ready for market) can delay the patent process, and associated costs, while continuing towards production and commercialization.

The Patent Office’s formal proposal was published on February 4, 2011. Written comments must be received on or before March 7, 2011. There will not be any public hearings. Comments may be submitted electronically to track_I_comments@uspto.gov or at the Federal eRulemaking Portal Web site (http://www.regulations.gov). Comments may also be addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Robert A. Clarke, Deputy Director, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy. The Patent Office stated that electronic submissions via the Internet are preferred.