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THE FORK IN THE PATENT EXAMINATION ROAD

by | Jun 8, 2010 | Patent | 0 comments

David Kappos, Director of the U.S. Patent and Trademark Office (USPTO), has recently announced the Office is considering a new initiative for the examination of patent applications filed in the USPTO. Referred to as the “Three Track” scheme, the applicant has the option of choosing how quickly or slowly they want their patent application examined. The three options are as follows:

Track I:  accelerated examination (proposed 4 months to first Office Action; 12 months to final disposition)

Track II:  traditional examination as currently applied (default track if one of the other tracks is not designated at filing)

Track III:  delayed examination for up to 30 months (for non-continuing applications first filed in the USPTO)


The USPTO hopes that allowing the applicant to direct the timing of the prosecution will help the USPTO in reducing the current backlog the Office is experiencing.  Importantly, it will allow applicants to more strategically plan their patent, and correspondingly, IP protection in general.  For instance, the accelerated Track I could be beneficial for biotechnology and pharmaceutical inventions, as these technologies tend to evolve quickly and may benefit from faster examination.  On the other hand, the slower Track III allows an applicant to delay payment of certain fees, and also provides time to assess the invention to determine whether to abandon or prosecute the application.
 
In addition, the initiative provides that if a US application is based on an earlier filed foreign application, the US application will not be examined until the foreign patent office has completed a search, provided a first Office Action, and the applicant has responded to the same. Once this has occurred, a US applicant can opt for accelerated or traditional examination in the US. In this manner, the USPTO aims to avoid duplicating work and increase their efficiency.
 
At this time, the initiative is a proposal and the USPTO is accepting comments. There will be a public meeting on this initiative on July 20, 2010 at 1:30 pm EST, in the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia (registration is required by July 16, 2010 by 5:00 pm). Written comments can be submitted until August 20, 2010 by emailing  3trackscomments@uspto.gov or mailing toMail Stop Comments-Patents, Commissioner for Patents, P.O.Box 1450, Alexandria, VA 22313–1450, marked to the attention of Robert A. Clarke.