Access to Track One Program Improved

Posted Saturday, December 27, 2014.

Track One prioritized examination is a USPTO program about which I have written previously (read more about Track One here). In short, applicants for a U.S. utility patent may request prioritized examination in which the USPTO either issues the patent or a final rejection within one year. There is a patent office surcharge for prioritized examination which amounts to about three times the regular filing fee.

For example, as of today a small entity would normally pay $730 in filing fees for a utility application with 20 total claims, of which three are independent claims. Without paying the Track One program fee, the usual timetable to issuance is about three years. By paying the USPTO an additional $2070, the application may be examined under Track One and a patent could issue in a year, provided the application meets certain other requirements. (For micro entities the amounts would be $400 and $1035.)

Those other requirements include that the application must have no more than thirty total claims (of which four may be independent). The application also must not have any multiple dependent claims. Additionally, upon filing the application, it must be accompanied by the inventor’s declaration, a certification and request form for entry into the Track One program, and the program fees.

After filing, the Track One application is reviewed by the USPTO to confirm that the application meets the program requirements (fewer than 30 claims, etc.). Until this year, if the application did not meet the program requirements, the request for Track One handling was denied. The applicant would receive most of the program fee back, but the application would be examined on the regular three year timeline. The only way to get the application back on Track One was to file it again after having changed it to comply with the program requirements (for example, removing enough claims to get it to 30 claims or fewer). This resulted in delay and expense associated with preparing and filing a second application.

Earlier this year, the USPTO reevaluated whether it was necessary to immediately dismiss applications from Track One for not meeting all the requirements upon filing. They concluded that a one-month grace period was reasonable in instances where certain program requirements were not met, including the incorrect number of claims or the lack of the inventor’s declaration, among others.

Now, if an applicant files a utility application with a Track One request, but one of the program requirements is not met, rather than denying entry into Track One and refunding the program fee, the USPTO will notify the applicant and permit a one-month grace period for remedying the issue. For example, if an applicant inadvertently files an application with 50 claims, the USPTO will notify the applicant and give the applicant one month to file a response which cancels enough claims to get the number of claims down to 30 or fewer.

This is a positive development which will improve access to prioritized examination. I am a fan of Track One and I encourage all of my clients to consider whether attaining the exclusive right to their inventions two years sooner is worth the program fee. $2070 may seem like a hefty surcharge. In an environment where there is a rush to copy successful products, however, the benefit of having an extra two years of the exclusive right to make and sell an invention may significantly exceed the surcharge. And Track One is now easier than ever to enter.

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