USPTO Self-Report on Track I Prioritized Examination

Publication: 
AIPPI e-News, No. 22

On September 26, 2011, the U.S. Patent Office implemented a new system for obtaining prioritized examination of certain applications following passage of the America Invents Act. This “Track I ” Prioritized Examination permits applicants to have their patent applications examined to a final disposition within 12 months for a fee of $4800 ($2400 for small entities). Participation in the Track I program may be requested either at the time of filing (76 Fed. Reg. 59051) or, following the expansion of the program on December 19, 2011, with the filing of an RCE (76 Fed. Reg. 78566).

The USPTO's January 3, 2012 Commissioner's report indicated that 1,694 Track I petitions had been submitted to date with an average 40.8 day timeframe from receipt to decision on the petition. Of the 1,231 requests decided, 1,218 were granted (98.9%). As of the Commissioner's report, 648 Track I applications had already received their first office action, equating to an average 66.4 days from filing of the Track I request to issuance of first office action. Furthermore, 23 allowances had been mailed, with the fastest being mailed 37 days after the application was filed achieving an average time to allowance of 39.2 days from petition approval. The first Track I patent issued on January 10, 2012 with a total pendency of 102 days.

The following requirements must be fulfilled to participate in the Track I program for a newly filed application:

  • File a new original utility or plant nonprovisional application under 35 U.S.C. §111(a) on or after September 26, 2011 (the procedure does not apply to international, design, reissue, or provisional applications, or reexamination proceedings, but can be used for continuing applications);

  • File an application that is complete under 37 C.F.R. § 1.51(b), including the oath or declaration, and payment of all fees at the time of filing;

  • File the application via the Office's electronic filing system (EFS-Web);

  • File an application with no more than four independent claims, thirty total claims and no multiple dependent claims;

  • Request prioritized examination (preferably by using Form PTO/SB/424); and

  • Pay the required fees for requesting prioritized examination at the time of filing.

The following requirements must be fulfilled to participate in the Track I program when filing an RCE:
  • File the RCE in an original (non-reissue) utility or plant application filed under 25 USC 111(a) or entered into the national stage under 35 USC 371 (Note: RCE in a U.S. national stage application is eligible for this program, while such applications are not eligible for basic Track 1 Prioritized Examination);

  • File the Request for Prioritized Examination via EFS-Web (except in a plant application) before a post-RCE Office Action is issued;

  • File an application with no more than four independent claims and thirty total claims and no multiple dependent claims;

  • Request prioritized examination and pay all fees.

  • Only one Request for Prioritized Examination of an RCE can be filed in any given application.

There are a number of actions that will terminate prioritized examination if taken by the applicant. See: Questions PE15 at http://www.uspto.gov/aia_implementation/faq.jsp. Once prioritized examination is terminated the application will be transferred from the Examiner's special docket to Examiner's regular docket. The following are examples of such terminating actions:
  • Filing a petition for an extension of time to file a reply;

  • Filing a request for a suspension of action;

  • Filing a Request for Continued Examination; or

  • Filing an amendment that results in more than four independent claims, more than thirty total claims, or a multiple dependent claim.

    This prioritized examination system is important to applicants who have an urgent patent enforcement or licensing program, patent pool requirement or PPH strategy.