By: Mark R. Malek
In a press release, the USPTO has announced that it is seeking public comments on a proposed new patent examination initiative that provides Applicants greater control over the speed with which their patent applications are examined. The three patent processing tracks include:
Track I – Prioritized Examination;
Track II – Traditional Examination under current procedures; and
Track III – An Applicant controlled delay for up to 30 months prior to docketing for examination for non-continuing applications first filed in the US.
Under Track I, the Applicant is required to pay a fee to prioritize examination of their application. The USPTO noted that the fee is to relate to the cost to the agency to maintain the pendency of other applications so that the Track I applications can be prioritized. Comment is sought from the public on the technologies where prioritization would most likely be useful so that he USPTO can determine an appropriate amount of the fee. The goal for Track I cases is to provide a first Office Action on the merits within four months, and final disposition of the case within 12 months. All I have to say about that is WOW! This is kind of one of those “I’ll believe it when I see it” kind of deals. First Office Action in four months? I highly doubt that will be the case. I have had cases where I do not even receive a filing receipt in the mail for four months. Does someone at the USPTO actually want me to believe that an application can possibly clear the Office of Initial Patent Application Examination, get assigned to an Examiner, a search and examination be conducted, and an Office Action transmitted….all within four months? Here’s the bigger questions – what happens if the Applicant does not receive their first Office Action for, let’s say, eight months? Is there a refund? This has continuously been my problem with many of these types of programs. Where is the accountability?
With respect to Track III applications, the hope seems to be that Applicants who have filed their applications, but who still question the value of their technology, may just decide to abandon their applications prior to examination. That’s a win-win for the USPTO. They get to collect a filing fee, and do not have to perform an examination in return. I am actually not too disturbed by the Track III plan. It will probably aid in eventually reducing the backlog. I would like a bit more details though. The real bulk of the cost for the Applicant is not the filing fee. Instead, and I am the first one to admit this, the significant cost is the legal fees associated with drafting the application. Maybe Track III applications could be a bit more like a provisional patent application, i.e., does not need as much detail as a utility patent application, thereby making it somewhat more inexpensive for the Applicant.
With respect to Track II cases, it seems as though nothing changes there. I do wonder whether Track II cases will be affected by an influx of people wanting to file Track I cases. My crystal ball tells me, however, that there may be a good number of folks that file both Track I and Track III cases, thereby freeing up Examiner time to review Track II cases. My concern, however, is the time when the Track III cases come up for examination, i.e., 30 months from when this program goes into effect. Will the examining corps be ready for the surge of cases that is sure to land on their desks at that time?
I hate that I sound so critical of the USPTO when they are coming out with new programs. I want to be very clear that I am very impressed with how proactive Director Kappos has been in trying to solve this problem. Just the fact that he took this job knowing and acknowledging the backlog problem speaks volumes of the man. It is so refreshing and I am so encouraged that the USPTO management team is finally onboard with trying to fix this problem.