Among the many changes to US patent law brought about by America Invents is the introduction of prioritised examination of patent applications, also known as the ‘fast track’, or ‘track 1’. The prospect of a multi-track examination process was first raised by USPTO Director David Kappos last year (see USPTO Multi-Track Examination Proposal & Non-US Applicants), in which applicants would be able to choose between ‘normal’ examination (‘track 2’), delayed examination (‘track 3’) and – upon payment of a suitable fee – prioritised examination (‘track 1’).
In fact, fast-track examination almost went into effect earlier this year, but was abandoned when it became apparent that there was no guarantee that the USPTO would be able to keep the corresponding additional fees necessary to fund the program.
However, with the passage of America Invents, fast-track examination has been implemented, and as of 26 September 2011 is available to all new applications.
PRIORITISED EXAMINATION PROGRAMThe program provides for an applicant to pay a US$4800.00 fee (or US$2400.00 for ‘small entities’) to place an application on the fast track, whereby the USPTO will endeavour to achieve final disposition of the application (i.e. allowance or final rejection) within an average period of 12 months.
In addition to payment of the fee, the applicant must also comply with certain further obligations in order to enter and remain within the program. The application must have no more than four independent claims, and 30 claims in total. Furthermore, the applicant must respond to any office action within the initial three-month period following the date of issue. The normal extensions of up to six months are available, but if the applicant does not respond within the initial period the application will drop out of the fast-track (i.e. being placed on the examiner’s ‘standard docket’, for those familiar with USPTO procedure).
HIGH INITIAL INTERESTAs noted above, the new prioritised examination program commenced on 26 September 2011. Yesterday (3 October 2011, US time) the USPTO communicated via its official Twitter account (@uspto) that it had received 850 fast-track patent applications in the first week!
On the positive side, that is a total of up to US$4,080,000.00 in additional fees (depending upon whether any of the applications were by small entities). However, there is currently no guarantee that the USPTO will be able to access this additional revenue for the purposes of hiring additional examiners in order to support the program without impacting upon the pendency of non-fast-tracked applications. Ultimate control of the PTO budget still resides with the US Congress.
POTENTIAL IMPACTAnd, as of right now, the USPTO clearly does not have the numbers of experienced examiners to maintain patent quality, and keep up with the rate of new regular filings. It is therefore very difficult to believe that this influx of fast-tracked applications, requiring rapid disposition by skilled examiners, will not have any impact on the examination of applications on the normal track. Even if the USPTO commences hiring of new examiners right away, they will still require extensive training – which is, of course, also a task for the more-experienced examiners who are also best-placed to handle the fast-track applications.
It is possible that the initial rush of fast-track applications is the result of applicants seeing the writing on the wall for some period prior to the passage of America Invents, and holding off filing new applications in order to take advantage of the new program. If so, then the rate of fast-track filings should fall off within a few weeks, hopefully to something more manageable.
But if not, we wonder whether it is only a matter of time before the ‘fast track’ becomes the new ‘regular track’, which in turn becomes the ‘slow track’? We also wonder what impact all of this will have on existing accelerated examination mechanisms, such as the Patent Prosecution Highway (PPH) programs?