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.