As 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.
Tags: Accelerated examination, BSKB, Michael Cammarata, Strategy, US
