As of September 26, 2011, applicants can seek fee-based prioritized examination under the USPTO’s Track I program. The September 23, 2011 Federal Register Notice sets forth the details of the program, which is largely identical to that previously set to take effect May 4, 2011, although the basic fee is higher. The USPTO decided not to implement the program in May because funding limitations required it to revise its hiring plans, and it did not believe that it could meet the Track I pendency goals with its current resources. While the USPTO’s funding situation has not improved, Track I is being offered now, in accordance with provisions of the Leahy-Smith America Invents Act.

Applications Eligible For Track I Examination

Track I is available for new, original (that is, non-reissue) utility or plant nonprovisional applications filed under 35 USC § 111(a) on or after September 26, 2011.

Track I is not available for international applications, design applications, reissue applications, provisional applications, or reexamination proceedings.

Track I is not available for national stage applications, but could be sought by filing a “by-pass continuation” application instead.

Track I is available for continuing applications (continuation and divisional applications).

The Filing Requirements For Track I Examination

A request for Track I examination must be filed at the same time the patent application is filed. The application must be filed as a complete application with all requirements of 37 CFR 1.51(b) met at the time of filing, and all papers must be filed electronically (via EFS-WEB).

Thus, the patent application must be filed electronically with:

  • an inventors’ oath or declaration
  • the basic filing fee
  • the search fee
  • the examination fee
  • the publication fee
  • any excess claims fees
  • any application size fee

and

  • a Track I request (see new form PTO/SB/424)
  • the Track I fee (e.g., $4800 or $2400 for a small entity)
  • the Track I processing fee ($130)

(The rules do not indicate whether a Sequence Listing must be filed with applications that fall under the Sequence Listing rules.)

The application must contain no more than four (4) independent claims, no more than thirty (30) total claims, and no (0) multiple dependent claims.

The On-Going Requirements For Track I Examination

An application accepted into Track I will be accorded “special” status and placed on the examiner’s special docket throughout prosecution until a “final disposition.” However, if an extension of time is taken for any response, Track I processing will be terminated. Also, Track I status will be lost if the application is amended to include more than 4 independent claims, more than 30 total claims, or any multiple dependent claims.

The USPTO’s Track I Goals

The USPTO’s goal for Track I applications is to provide a “final disposition” within twelve months of prioritized status being granted. According to the USPTO, “final disposition” means any of

  • a notice of allowance
  • a final Office action
  • a notice of appeal
  • a declaration of interference
  • a request for continued examination
  • abandonment

To manage its Track I workload, the USPTO only will accept up to 10,000 applications per fiscal year.

Track I May Be An Attractive Option

It is likely that many applicants will be eager to take advantage of Track I. Because qualifying for Track I appears to be straight-forward, Track I applicants should not suffer the delays associated with obtaining approval of a Request for Accelerated Examination or a Patent Prosecution Highway (PPH) Request. More significantly, Track I applicants will not have to undertake the prior art search and analysis required for Accelerated Examination, and will not have to limit their claims to those allowed by another Patent Office, as they do for the PPH.

It will be interesting to see how many applications are filed under Track I, and how well the USPTO is able to meet its twelve-month benchmark.

Lingering Concerns

I have written several articles about the USPTO’s Track I program. While the final rulemaking answers some of my questions, it does not address all of my concerns. Indeed, the issues relating to “dead-end express lanes” and the lack of a guarantee against “traffic jams” that I discussed when Track I was about to take effect in May remain problematic.

The most urgent problem then and now relates to USPTO funding. In April 2011, the USPTO exercised its own best judgment to delay Track I until it had adequate funding to support hiring additional examiners so that the Track I program would not negatively impact the pendency of regular applications. Now, it appears that Congress has mandated Track I without guaranteeing that the USPTO will be able to spend the fees it collects to run this program. It is disappointing that the USPTO once again finds itself in the middle of partisan politics and disagreement over the Federal budget, when the USPTO itself is user-fee funded, not taxpayer funded.