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Tuesday Jun 15, 2010

The Three-Track Proposal: Putting Applicants in Control of Examination Timing

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Today, I’d like to share some perspectives on the USPTO’s “Three-Track” proposal for patent examination, which was released for public comment earlier this month.  This proposed examination initiative would allow inventors to choose among three different tracks of patent examination and thereby tailor the patent examination process to better suit their business needs.   We are currently seeking public comment on this proposal and will hold a public meeting on July 20th.

The Three–Track proposal is designed, first and foremost, to help us put Americans to work – that is, to enable applicants to increase their own, and the USPTO’s effectiveness by selecting their most time-critical work for priority processing.  It is also intended to help reduce pendency and enhance work sharing among IP offices. 

Track 1 of the program is prioritized examination aimed at achieving final action within 12 months of the request for prioritized examination and the payment of an accompanying fee.   Track 2 would be today’s examination process, which currently takes on average 34 months to complete.  Track 3 would allow non-continuing applications first filed at the USPTO up to 30 months to decide whether to request examination.  In addition, the proposal would allow applicants to “change tracks” if circumstances warrant it-- either speeding up or slowing down the patent examination process as needed. 

The proposal would enhance worksharing by synchronizing USPTO examination of applicants first filed overseas to follow overseas examination—thereby ensuring the overseas patent office work product is available to the USPTO examiner when she undertakes her work.  Specifically, it would require applicants in any application that claims the priority date benefit of a foreign application to submit a copy of the search report, if any, and the first action on the merits from the foreign office together with arguments explaining why the claims in the U.S. application are patentable in the U.S. given the positions taken by the foreign office. 

An inventor who files first in the United States -- or an inventor who files first in a foreign office and receives a first action on the merits that is in turn submitted along with applicable comments to demonstrate how the claims in the U.S. application are patentable -- may request prioritized examination under Track 1 after paying the relevant fee.   Thus, both applicants who file first in USPTO and applicants who file overseas first can obtain the benefit of accelerated processing at the USPTO.   Track 3 is available to an inventor who files first in the United States provided the applicant does not request non-publication.    

The Three-Track proposal is a win-win for inventors, the Agency and the public.  Patent applicants are allowed to either accelerate or delay patent processing according to their needs or market conditions.  Inventors can opt for Track 1 for inventions that are ready for immediate commercialization.  Or, by taking advantage of Track 3 examination, both small and large entities are able to delay the cost of obtaining a patent until their invention is ready for commercialization and they determine that further investment in the patent process makes sense.

The Agency benefits from the ability to focus resources more effectively on the most important work of the applicant community.  In addition, we expect this will help with the backlog generally, as some percentage of Track 3 applications will be dropped without payment of the search and examination fees. In a turn on an old adage, a sinking tide lowers all boats – in this case, in a good way.

The public would also benefit by the Agency prioritizing its resources toward applications likely to be used in the market much more quickly than is possible under the current process.  By examining the most promising inventions promptly, the USPTO will facilitate investment in commercializing innovation and the creation of new jobs.

One issue left open by the Three-Track proposal is setting of fees for Track 1, especially for small and micro entities.  Unfortunately, the USPTO does not have statutory authority to discount the Track 1 filing fee for small or micro entities.   If such enhanced authority were provided by Congress, we would grant a 50% discount for small entities and a 75% discount for micro-entities. Within the limits of the authority we have at the USPTO to help improve the patent process for our applicant community, we have designed the Three-Track proposal to help all patent filers – small and large.

I am very excited about the many benefits we can derive from a three-track examination process, and look forward to receiving comments from our employees, the IP community and the public. 



The 3-track system indicates your understanding that different patent applications should be treated differently; implementing this concept could contribute to increased efficiency at the USPTO. Though we can't yet know whether fast/ordinary/delayed is the ideal system for categorizing patent applications, it's a step in the right direction. I believe that the USPTO needs to start reviewing several different types of multi-tiered approaches to patent examination, because the traditional one-size-fits-all approach doesn't meet the needs of today's environment. Until we can get real patent reform, however, such incremental steps will have to suffice.

Posted by Gena777 on June 15, 2010 at 09:54 PM EDT #

The establishment of the Track 1 prioritized applications has serious philosophical and ethical ramifications. The USPTO is a governmental agency that should be representing the interests of all American citizens. The USPTO does not exist to serve just the interests of the wealthy organizations that can easily afford Track 1. The USPTO is not a private organization such as an airline that can have First Class and Coach. Since it is clear that Track 1 helps rich organizations far more than other applicants, the establishment of Track 1 applications goes against the basic American value of equality of opportunity. Our sense of equality requires that the USPTO operate a more even-handed patent application system. It is ethically wrong to suppress the independent inventors, while at the same time facilitating the advantages of the privileged applicants.

Posted by Nickolaus Leggett on June 22, 2010 at 02:50 PM EDT #

Enhancing Fast Examination with Applicant option to Schedule Patent Issue. Scenario: Innovation in need of Funding. The Patent Office would provide a fast “notice of allowance” but with an Applicant option to schedule patent issue (public disclosure) for up to at least 18 months (from filing). For example, an Applicant receives a “notice of allowance” in 3 months on a nice set of broad and backup claims. Applicant could then “sell” investors by having known claims (value & lower risk) along with 15 months of stealth/first-mover advantage (lower risks and greater potential reward). This combination would help start-ups to obtain/increase funding and succeed in bringing the innovation to market as first-mover.

Posted by Inventor0875 on July 07, 2010 at 05:00 PM EDT #

Is there a conflict between the first-to-file concept and the proposed three-track patent application system? For example, how do you detect conflicting applications that are not yet processed (hidden) in Track 2 or Track 3 queues while you are doing a Track 1 search? Can you have a situation where applications are granted under Track 1 for inventions that are already covered in applications that have not yet been processed in Track 2 or Track 3?

Posted by Nickolaus Leggett on July 20, 2010 at 04:55 PM EDT #

Sounds good. Track 1 for speed, or Track 2 for economy. Extra sweet that the speedsters will help pay for us more parsimonious types. Good to have some choices open to all.

Posted by Ray Grogan on October 04, 2010 at 05:22 PM EDT #

An enhancement to Fast Examination (revision to my previous post): The Patent Office provides fast patents but with an Applicant option to schedule/delay public disclosure of the patent for up to at least 18 months (from filing). For example, an Applicant receives patent(s) in 3 months (using lots of long interviews) on quality independent and backup claims. Applicant could then “persuade/sell” investors with known claims (credibility; value; & lower IP risk), along with 15 months of stealth/first-mover advantage (lower short-term competitor risk & possibility of greater reward). This combination would help start-ups to obtain/increase funding and succeed in bringing the innovation to market as first-mover. Enhanced Fast-track now becomes a U.S. competitive advantage.

Posted by Inventor0875 on November 03, 2010 at 06:49 PM EDT #

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