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,