The rules are pretty straightforward. To participate in Track I, a request must be filed with a new non-provisional utility or plant application (not a design application), the application must be filed electronically, and must include a fee for prioritized examination. The application must be limited to 4 independent and 30 total claims. Although the PTO does not propose to publish the applications early, the applicant must also pay the $300 publication fee with the initial filing.
The main question that will concern applicants is the required fee. Ideally, the PTO would like to set the fee at $4,800 and $2,400 for small entities. This is on top of the normal application fees. The statutory provision for setting PTO fees only lists certain fees for which the PTO may provide a 50% discount for small entities. Since the accelerated examination fee is new, there is no statutory provision for a small entity discount. Thus, the proposed rule is to charge everybody a fee of $4,000, regardless of size. The PTO is hoping that Congress will give it authority to charge the $4,800/$2,400 fee instead.
The PTO’s office-wide goal for Track I applications is final disposition within 12 months of initial filing. Final disposition generally means a notice of allowance or final office action. Further, the filing of a notice of appeal, the filing of an RCE, the declaration of an interference, or the abandonment of an application also constitute final disposition. The rule does not provide any detriment to the office or benefit to the applicant if the PTO does not meet this goal; i.e., there is no refund.
If an applicant files a request for extension of time (by, for example, filing a response to an office action more than three months from its mailing date) or files a Request for Continued Examination (RCE), the application is dropped out of accelerated status. The application goes back into the regular examination queue and there are no refunds.
Any new application, including continuing or divisional applications, is eligible for Track I status by complying with the requirements of the rule.
The rule would limit the number of applications on Track I to 10,000 during the first year, at which point the PTO would evaluate the procedure for subsequent years.
The PTO addressed a number of comments that it received to its original notice published last year. The best thing the office did was to eliminate the proposed discrimination of foreign-originated applications.
The PTO claims that the proposal is neutral on the backlog and that it won’t effect the status of applications that proceed under the normal examination pace. The fee will permit the office to hire sufficient examiners to meet the goals of the Track I applications while leaving the others unchanged.
If an application is appealed, there is no effect on its status at the BPAI. Track I only applies to applications before the examiner.
I’m not sure why an application loses its Track I status when an applicant requests additional time for filing a response or if an examiner requires the filing of an RCE. For the time extensions, the PTO could simply adjust its goals accordingly. This will require applicants to remain diligent during prosecution.
Given that many examiners are still churning RCEs, applicants should only use Track I if they are prepared to compromise significantly on the claims of an application. Perhaps Track I could be used to get an initial patent quickly, while additional applications use normal examination to get additional and potentially broader coverage.
Finally, the ability to obtain a patent quickly comes with a potential risk of secret prior art. Since patent applications are prior art as of their filing date once they are published (under § 102(e)), and publication is not until 18 months from the filing date, having a patent that issues in less than 18 months means there could very well be secret prior art that would invalidate the patent that has been published until after the patent issues. Granted, this could happen under the current system as well, but is more likely with accelerated examination.
If you have comments on the proposed rules, you need to move quickly. The comment period closes on March 7.