Prioritized Examination at the USPTO
In June 2010 the United States Patent and Trademark Office (USPTO) announced plans to provide patent applicants with different “tracks” that they can select based on the speed with which they want their patent applications examined. The initial three-track proposal included:
Track I: Prioritized Examination;
Track II: Traditional Examination Under Current Procedures; and
Track III: For new applications first-filed in the USPTO, an applicant-controlled delay for up to 30 months.
While Tracks II and III are not yet completely defined, on April 4, 2011 the USPTO announced a May 4, 2011 launch date for Track I. Beginning May 4 applicants can request prioritized examination under Track I and pay, in addition to the regular filing fees, a fee of US$4,000. The goal is to have a patent application properly filed under Track I reach final disposition at the USPTO within 12 months of the granting of prioritized status. Such final disposition would mean that the patent application is either allowed, abandoned, or is subject to a final rejection, which can be appealed.
The USPTO is limiting requests to a maximum of 10,000 applications during fiscal year 2011, which ends on September 30. Small entity discounts (that is, for individuals or corporations with less than 500 employees) will not be applicable to the prioritization fee.
Though this is a costly option, it is a viable one for applicants with inventions where an early disposition of patent applications can have significant value. The initiative could also benefit the public in that valuable inventions can be patented and therefore published more quickly, and in many cases brought to the market in an expeditious manner.
We expect to hear more information regarding Tracks II and III in the near future.
Accommodations for Japanese Applicants
In another helpful announcement, on March 17, 2011 the USPTO announced accommodations for applicants from Japan who were affected by the catastrophic events of March 11, 2011. For patent applications and reexamination proceedings where there are due dates outstanding, the USPTO will, upon written request, reissue documents that have statutory or non-statutory time periods associated with them. The reissuance will reset the time period for responding and should, therefore, act like a “free” extension of time for responding to the matter at hand. Regarding Japan-based patentees who may have owed maintenance fees, the USPTO is waiving the surcharge for paying the maintenance fees during the 6-month grace period following the initial payment window. Because the USPTO processes many patent applications from Japanese applicants, this accommodation is a significant help in allowing those applicants and patentees to focus on more important matters.
For further information on any of the USPTO patent process changes, please contact your Squire Sanders lawyer or one of the individuals listed in this Alert.