Prioritized Twelve-Month Examination Begins at the U.S. Patent and Trademark Office on May 4, 2011

April 14, 2011

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Beginning May 4, 2011, the U.S. Patent and Trademark Office (USPTO) will initiate a prioritized examination procedure referred to as “Track One.” The Track One procedure permits an applicant to file a request, upon payment of a $4,000 fee, which is not reduced for small entities, to prioritize examination within a twelve month period upon grant of the request. Prioritized examination can be requested for an originally filed non-provisional patent application, which includes continuing patent applications, specifically continuation and divisional patent applications, or a plant patent application. A request for prioritized examination under Track One cannot be made in a reissue application or an application entering the national stage under 35 U.S.C. § 371.

Requesting Prioritized Examination
The request for Track One examination must be filed electronically with a complete application accompanied by a request form PTO/SB/424, which will be available on the USPTO website. A complete application includes any excess claim fees, any application size fees, an oath or declaration, the basic filing fee, the search fee and the examination fee. An application requesting or receiving Track One prioritized examination may not include multiple dependent claims, and may not have more than four independent claims nor more than thirty total claims.

Prioritized examination of an application will be terminated if an applicant files a petition for an extension of time to file a reply, a request for continued examination, a request for suspension of an action or an amendment to an application that results in more than four independent claims, more than thirty total claims, or a multiple-dependent claim.

Initially, the USPTO will limit the number of applications that will receive prioritized examination under Track One to 10,000. At the end of the fiscal year 2011, the USPTO will reevaluate whether this number should be amended to permit additional applications to request prioritized examination.

Goal of the USPTO and Considerations
The goal for processing applications under prioritized examination by the USPTO is to provide a final disposition within twelve months of prioritized status being granted. A final disposition for the twelve month goal means any one of the following:

  •  Mailing of a Notice of Allowance
  • ·Mailing of a Final Office Action
  •  Filing of a Notice of Appeal
  •  Declaration of an Interference
  •  Filing a Request for Continued Examination
  • ·Abandonment of an application
Applicants should consider exploring Track One as an option for examination of newly filed applications and continuing applications of applications that have been pending at the USPTO for lengthy periods of time. Currently, the USPTO has not established a limit on the number of times an applicant can request Track One examination for successive, continuing applications. Track One provides an
opportunity for an applicant to advance prosecution of applications that may have significant commercial value, thereby obtaining patent rights generally sooner than traditional examination.

Resources for Track One
Please contact a patent attorney to discuss the possible use of the Track One option in continuing and future applications. Please click on the attached link to the USPTO for information on the Track One prioritized examination http://www.uspto.gov/news/pr/2011/11-24.jsp and Federal Register Notice of Implementation.

Other USPTO Programs For Prioritizing Examination
The USPTO has the following additional programs, each with particular requirements, that may allow prioritized examination of an application. Please contact a patent attorney to discuss the details of each of the programs and suitability for your particular business goals. The links provide detailed information regarding the requirements for each program.
 
Overview

April 14, 2011

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Beginning May 4, 2011, the U.S. Patent and Trademark Office (USPTO) will initiate a prioritized examination procedure referred to as “Track One.” The Track One procedure permits an applicant to file a request, upon payment of a $4,000 fee, which is not reduced for small entities, to prioritize examination within a twelve month period upon grant of the request. Prioritized examination can be requested for an originally filed non-provisional patent application, which includes continuing patent applications, specifically continuation and divisional patent applications, or a plant patent application. A request for prioritized examination under Track One cannot be made in a reissue application or an application entering the national stage under 35 U.S.C. § 371.

Requesting Prioritized Examination
The request for Track One examination must be filed electronically with a complete application accompanied by a request form PTO/SB/424, which will be available on the USPTO website. A complete application includes any excess claim fees, any application size fees, an oath or declaration, the basic filing fee, the search fee and the examination fee. An application requesting or receiving Track One prioritized examination may not include multiple dependent claims, and may not have more than four independent claims nor more than thirty total claims.

Prioritized examination of an application will be terminated if an applicant files a petition for an extension of time to file a reply, a request for continued examination, a request for suspension of an action or an amendment to an application that results in more than four independent claims, more than thirty total claims, or a multiple-dependent claim.

Initially, the USPTO will limit the number of applications that will receive prioritized examination under Track One to 10,000. At the end of the fiscal year 2011, the USPTO will reevaluate whether this number should be amended to permit additional applications to request prioritized examination.

Goal of the USPTO and Considerations
The goal for processing applications under prioritized examination by the USPTO is to provide a final disposition within twelve months of prioritized status being granted. A final disposition for the twelve month goal means any one of the following:

  •  Mailing of a Notice of Allowance
  • ·Mailing of a Final Office Action
  •  Filing of a Notice of Appeal
  •  Declaration of an Interference
  •  Filing a Request for Continued Examination
  • ·Abandonment of an application
Applicants should consider exploring Track One as an option for examination of newly filed applications and continuing applications of applications that have been pending at the USPTO for lengthy periods of time. Currently, the USPTO has not established a limit on the number of times an applicant can request Track One examination for successive, continuing applications. Track One provides an
opportunity for an applicant to advance prosecution of applications that may have significant commercial value, thereby obtaining patent rights generally sooner than traditional examination.

Resources for Track One
Please contact a patent attorney to discuss the possible use of the Track One option in continuing and future applications. Please click on the attached link to the USPTO for information on the Track One prioritized examination http://www.uspto.gov/news/pr/2011/11-24.jsp and Federal Register Notice of Implementation.

Other USPTO Programs For Prioritizing Examination
The USPTO has the following additional programs, each with particular requirements, that may allow prioritized examination of an application. Please contact a patent attorney to discuss the details of each of the programs and suitability for your particular business goals. The links provide detailed information regarding the requirements for each program.
 

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