08 June 2010

USPTO Multi-Track Examination Proposal & Non-US Applicants

Patentology is watching with some interest the USPTO's proposal for a multi-track examination system.

Of course, we are not the only one -- see, for example, the posts on the Patently-O blog here and here.

However, as an antipodean practitioner, Patentology has a particular interest in the potential effect of these proposals on non-US applicants, as you will see.


The Director of the US Patent and Trademarks Office (USPTO), Mr David Kappos, recently announced the proposal for a new three-track system for the examination of US patent applications.

Under the proposed system, applicants would have the option of paying an additional fee, on top of the standard filing and examination fees, in order to have an application “fast-tracked” by jumping ahead in the examination queue.

The existing “ordinary” examination track, in which applications are examined on a “first come, first served” basis, would remain.

In addition a third, delayed, examination track is proposed, which would enable an application effectively to be put on-hold for up to 30-months.


In an interview, conducted prior to a formal announcement of the proposal on 3 June 2010, Mr Kappos stated that: “Not every application needs to go at the same speed.  Some need to go fast and some need to go more slowly.”

In general, this appears to be a positive proposal, and Patentology agrees with Kappos that there is much to be said in favour of allowing applicants to have more control over the pace of examination.  Many national offices, including those of Australia, Canada, China, Japan, South Korea and the European Patent Office already do this, by providing for accelerated examination and/or requiring a separate request to be filed before examination will commence.  Where required, examination requests are generally subject to a final deadline, which in many cases is later than the 30 months being proposed for the US delayed examination track. In this respect, therefore, the US would simply be bringing its examination procedures more into line with those of its major trading partners.

Furthermore, the USPTO currently has a backlog of over 750,000 patent applications awaiting examination, and the queue is not getting any shorter.  According to a recent posting on the Patently-O blog, although the USPTO finalises proceedings in relation to about 7,600 applications each week, these are currently outpaced by the number of new applications filed, running at around 8,700 per week.

The delayed examination track would allow applicants to put less important applications on the back-burner, and it is possible that some of these would ultimately drop out of the queue altogether, especially if the USPTO provides an incentive (such as a partial refund of fees) for voluntary withdrawal of applications. Such incentives are not a part of the initial proposal, but are likely to be raised during a public consultation process.


We do, however, have some concerns about the impact of the proposed system on non-US-based applicants, including our own Australian clients.  In particular, an element of the current proposal is that applicants for US applications based on (ie claiming priority from) an earlier non-US application would need to satisfy certain procedural requirements before the US application could join either the fast-track queue or the ordinary examination queue.  These requirements would include providing copies of a search report and/or a first examination report issued by the patent office of the originating country, along with a response prepared as if the report had been issued by the USPTO.

As a result, US applications claiming foreign priority would be placed on the delayed examination track by default, and could only move to the fast track, or even the ordinary track, once examination of the priority application has commenced.  Many applicants currently delay examination of non-US applications until after a corresponding US application has been examined, and these applicants may need to reconsider their portfolio management and filing strategies if the proposed system goes ahead in anything like its current form. 

It is a particular concern that applicants whose country of first filing has delays in examination that are comparable to, or longer than, those of the USPTO may be effectively excluded from the fast-track, and indeed possibly also the ordinary track (to which they presently have access).

Patentology suspects that this is an intended outcome of the proposal, since the USPTO would not be entirely unjustified in considering that it is currently doing much of the “heavy lifting” within the international patent system.  Certainly it would be logical to conclude that workloads in the USPTO could be reduced, and quality of examination improved, if US examiners were able to use the results of foreign search and examination rather than the other way around, as is now more commonly the case.

For some Australian applicants (and those in other countries that do not impose restrictions on their citizens as to the first country of filing) it may become more attractive to file a US provisional application as a basis for priority, rather than an Australian application.


A number of issues remain open, including the following:
  1. whether a general fast-track queue should replace, or be in addition to, existing accelerated examination cases, such as those under the green technology initiative, and under the various Patent Prosecution Highway (PPH) programs currently operating between the USPTO and other patent offices;
  2. whether there should be limits on the total number of claims and/or independent claims in a fast-track application;
  3. the manner in which US national phase applications of international (PCT) applications searched and examined by patent offices other than the USPTO be handled;
  4. whether applications should be allowed to enter the fast-track at any time, or only within limited periods (eg at filing).
The USPTO will be entering into public consultation to address these – and many other – questions, starting with a public meeting to be held on 20 July 2010.

Written comments may be submitted up until 20 August 2010, via email to 3trackscomments@uspto.gov.

An Official Notice of the public meeting, setting out further details of the proposal, along with 33 questions on which submissions are invited, has been published in the US Federal Register, and can be downloaded here.


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