24 August 2012

US Fast Track Examination Strategy 101

Slower Traffic Keep RightAs many readers will be aware, the America Invents Act was signed into law on 16 September 2011.  While it will not take full effect – most notably replacing the first-to-invent priority rule with a first-inventor-to-file rule – until 16 March 2013, one provision that did come into effect almost immediately was a new prioritised examination procedure.

Prioritised examination – also known as Track One – is available for a fee at the time of filing an original utility or plant patent application, or as a once-only option when filing a Request for Continued Examination (RCE).  Further information about Track One can be found on the US Patent and Trademark Office (USPTO) web site.  The fee payable for entry into Track One is currently US$4800, or US$2400 for a ‘small entity’, which generally covers companies up to 500 employees, subject to some additional considerations (further details can be found in the USPTO Manual of Patent Examining Procedure, § 1.27, though if in doubt the advice of a US patent attorney or agent is strongly advised).

Since the Track One program commenced, we have recommended it to a number of our local Australian clients.  In a country where an annual turnover of A$20 million dollars qualifies a company for the ‘big end of town’, very few of our clients need to worry about large entity fees – and those that do can comfortably afford them.  With the Australian dollar currently trading above parity against the US dollar, we think that a fee of less than A$2400 to obtain a US search and examination within about three months, and possible final disposal of the application within 12 months, is something of a bargain.  The alternative – a two or three year wait for a first Office Action, followed by prosecution which might drag on for a year or more – carries costs of its own which can easily exceed the Track One fee.

We therefore considered ourselves very fortunate this week to exchange notes on Track One filing strategy with Michael Cammarata, who is a partner of the US firm Birch Stewart Kolasch Birch LLP, a.k.a. BSKB.  Avid consumers of IP blogs should recognise BSKB as a site-wide sponsor of Gene Quinn’s IP Watchdog blog (where, incidentally, we recently contributed a guest post on Apple’s strategic use of the Australian patent system).

Michael has kindly agreed to let Patentology share some of his considerable insight and experience with the Track One process – to date BSKB has filed about 50 prioritized examination requests.

BEFORE FILING

The Track One process has a few requirements which applicants need to bear in mind before filing.  We highlight just a few of these here, and would advise anyone considering the process to read the more-detailed information available on the USPTO web site, and to consult with an experienced advisor before proceeding.

The main requirements are:
  1. to qualify for Track One, an application must be complete upon filing, which requires the inventor’s oath or declaration to be filed with the application documents, i.e. anything that would normally provoke a Notice to File Missing Parts may result in the request being dismissed;
  2. the prioritised examination request must itself be present upon filing;
  3. a Track One application may have no more than four independent claims, 30 claims in total, and may not include any multiple dependent claims; and
  4. certain actions by the applicant will result in the Track One process being terminated, including filing any petition for an extension of time (so replies to Office Actions must be filed within three months), or filing an RCE.

STRATEGIC CONSIDERATIONS

Obtaining a US patent quickly will often be a very valuable achievement, particularly for startups and other companies seeking investment, or where rapid copying by a competitor of a new product or service is anticipated.  However, there are some down sides.

Firstly, it is usually going to be easier to secure issue of narrower claims than broader ones.  While a less expansive scope of protection may be adequate to cover an initial product or service, in the longer term an applicant is likely to want to obtain the broadest scope of rights available, which may require more negotiation with the examiner than is permitted under Track One.

Logically, Track One will therefore be most effective if speed, rather than a broad scope of rights, is the priority.  Even so, speed is often good, even if it is not at the top of the list.

A long pendency can actually be beneficial if the desired scope of protection changes over time.  For example, experience with consumers after launch of a new product may result in a realisation that features originally considered most commercially valuable (and thus made the focus of original claims) are actually not as important as expected, and that there is some other novel aspect of the product which is more-highly valued by consumers.  In another scenario, a competitor might launch a variation of the product that is within the scope of the description, but not within the literal scope of the original claims.

In either of these scenarios, it is beneficial to have an application pending in which the claims can be amended in light of the changed circumstances.

It would be nice if, in any of the above situations, you could have your cake and eat it too.  Well, the good news is that BSKB’s experience suggests that maybe you can!

STRATEGY I – PENDING APPLICATIONS

The first question that some readers may be asking is: what if I have an application already pending – can I request that it be placed into Track One?

The short answer to this question is ‘no’.  The request must be present at filing of the application.  However, the work-around is simply to file a continuation.  As Michael told us via email:

In the cases we filed, we had a parent case on file when Track One became available.  We then filed a continuation application with narrower claims and a Track One request.

So, even for applications which were filed before the commencement of the Track One program (on 26 September 2011), a continuation application can be used to gain access to prioritised examination.  Of course, filing narrower claims facilitates an easier prosecution for the Track One case, while retaining the potential for broader scope in the parent application.  Which brings us to the second strategy.

STRATEGY II – FAST-TRACKING THE PARENT

Readers familiar with some of the internal operations of the USPTO may be aware that US examiners receive a performance-based pay component which depends in part upon the number of applications they examine and/or dispose of each year.  As a result, they have an incentive to avoid unnecessary duplicated effort in examination.  Two co-pending applications disclosing the same subject matter, and with claims having overlapping scope, can generally be dealt with via a single search, so long as they are examined in close succession.

Michael explains BSKB’s experience in these circumstances:

In the cases we handled, the parent case and Track One continuation were filed within a few months of each other.  Also, the Track One claims were essentially narrower versions of the parent claims.  In many of the cases, we had discussions with the examiners. 

We mentioned the parent case and the fact that the Track One claims are narrower versions of the parent claims.  We wanted the examiner to realize that it would be very easy for him to examine the cases together or at least very close in time.  And that is exactly what happened in the large majority of the cases we filed. 

Yes, we received obviousness-type double patenting rejections, but a quick terminal disclaimer easily solved that issue.  Because the parent and Track One continuation had the same filing date there was no effect on the patent term other than a possible difference in patent term adjustment (PTA).  But since both cases proceeded so quickly there was no PTA so the patent terms are the same.

STRATEGY III – KEEPING AN APPLICATION PENDING

Finally, we wondered about our scenarios in which a long pendency is beneficial.  We asked Michael whether we could achieve the desired outcome by filing a new continuation application at a late stage of processing the Track One application, i.e. after allowance, but prior to issue.

Michael responded:

In the strategy you propose I agree that the continuation of the Track One should be filed late in prosecution, such as after receiving a notice of allowance.  There remains a risk that the examiner will pick up the continuation out of turn such that the continuation may proceed more quickly than desired.  But this risk seems relatively small.  In this situation, no call to the examiner would be placed.  Also, the prior art search in the parent Track One case would have been done quite some time ago thereby further demotivating the examiner to pick up the continuation quickly.

CONCLUSION

So, there we have it – at least three ways to turn the new Track One examination procedure to your (or your client’s) advantage.

In summary:
  1. you can enter Track One via a continuation even if you have already filed an application without a prioritised examination request;
  2. there is an incentive for the examiner to pick up cases with similar claims and effective filing dates simultaneously (or nearly so), which may enable you to get two fast first Actions for the price of one; and
  3. continuations can also be deployed to keep applications pending, as a hedge against any later requirements for claims of a different scope.
No doubt there are other strategies we have not covered here – please fee free to share your own ideas in the comments below.
 
But maybe avoid telling everybody you know.  The USPTO is accepting no more than 10,000 Track One requests each fiscal year.  While this does not seem to have been a major concern in the first year of operation (as of June, fewer than 5,000 Track One requests had been accepted) we find it hard to believe that, once applicants and their advisors catch on to some of the strategies enabled by Track One, the number of requests will not increase.

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