The USPTO is proposing significant changes to the application queuing system to give applicants greater control over the examination process and promote the USPTO’s worksharing goals. The new system would offer three examination tracks: “prioritized,” “traditional,” and “delayed.” While domestic applicants could opt into any of these tracks, applications that claim priority to a foreign application would be completely derailed until the foreign patent office issues a substantive examination report. I understand that the Patent Office has to do something to address the examination backlog, but the kinks in the tracks make this proposal a train wreck waiting to happen.
The Promise of a High-Speed Prioritized Examination Train . . .
The USPTO lures us on to this high-speed train with the promise of prioritized examination without the burdens associated with accelerated examination or the strict requirements of the patent prosecution highway (PPH). Prioritized applications would receive a first office action within four months and a “final disposition” within twelve months. To get on board this high-speed train, applicants will have to pay a “cost recovery fee” to cover the costs of providing the necessary “resources” to meet these goals without further delaying examination of non-prioritized applications.
. . . at What Price?
Applicants may hesitate at the ticket counter when they realize that the USPTO won’t even hazard a guess as to the price of this first class ticket. The USPTO warns applicants of a “substantial” fee that will cover the costs of hiring and training new examiners and other employees. Applicants may be willing to pay up, however, in order to obtain prompt examination without having to prepare an examination support document for accelerated examination.
Who Will Keep Train Robbers at Bay?
Applicants who venture on board should be wary of train robbers. The USPTO cannot guarantee that these new fees will not be hijacked by Congress for its general fund. Isn’t fee diversion at the root of the current application backlog? How will this problem be solved? Is the USPTO counting on legislative patent reform to solve this problem?
Who Will Keep the Train Running?
Applicants also should ensure that the USPTO will have enough examiners to keep this high-speed train running. The USPTO already struggles with examiner hiring and retention. If the USPTO can’t hire, train and retain enough examiners to meet its current needs, how will it be able to hire and train new examiners to handle the workload associated with prioritized applications? Will current examiners be assigned to prioritized applications while new examiners are hired and trained? Will current USPTO funds be used to support prioritized examination until the fees reach sustaining levels? What does this mean for non-prioritized applications?
Leaving Everyone Else Behind
Even if the USPTO is able to work out the kinks of the proposed prioritized examination track, it will be leaving most applicants behind. The USPTO appears to have given up on reducing the backlog of non-prioritized applications, hoping instead that applicants will give up and abandon their applications. Applicants unable or unwilling to pay the steep price for prioritized examination will continue to see their applications languish while waiting an average of 20-30 months for examination.
Significant Track Work Still Required
The USPTO needs to re-tool this plan to keep the examination train on track for all applicants. A high-cost option for prioritized examination could work if the USPTO could guarantee that the fees will be available to support such a program and if there are enough qualified examiners to handle the increased workload without causing further delays for non-prioritized applications. Unless and until the USPTO has sufficient resources to support a high-speed train, it will be destined to jump the tracks.