Choose-Your-Own-Adventure: A Multi-Track Patent Examination System

ForkThe USPTO is in the midst of considering a new multi-track examination system that would offer patent applicants options to choose between fast-track “prioritized” examination, ordinary examination, and delayed examination.  It is expected that applicants choosing the fast-track will be required to pay an additional fee while applicants choosing delay will pay a reduced application fee. Small entities would continue to pay half-price regardless of their choice. [WSJ Article by Amy Schatz]

The PTO is expected to release a request for comments later this week and to hold a public meeting this summer before implementing the program in early 2011.

The 750,000 backlog of pending patent applications is tolerated largely because so many of the pending applications relate to inventions that are not urgent. Rather, companies and inventors tend to file for patent protection well before a market develops or a marketable product exists. In those situations, applicants are not upset by PTO delay because that delay saves the company from making cash expenditures.  In the short-run, the delay pushes-off potential lawyer and PTO fees. In the longer run, the delay provides an opportunity for patent applicants to cull their portfolio with either the invention or its marketability fail to be realized.  Here at the University of Missouri, for instance, the usual approach is to file a lower-cost provisional patent application that is then followed by a more-costly non-provisional application once the value of the invention is more assured — this is an approach frequently followed for US-originated inventions. 

Of course, with the current backlog, patent applicants are delayed regardless of whether they want delay. And sometimes it is important to quickly obtain patent protection — perhaps to protect an emerging market or to satisfy potential investors.  A major problem with the current system is that the backlog delays everyone and there is no easy mechanism to speed-up the process.

On this point, the Wall Street Journal Quoted Director Kappos: “Not every application needs to go at the same speed. Some need to go fast and some need to go more slowly. . . . By allowing applicants some control over the timing of examination, USPTO resources would be better aligned with the needs of innovators.  We look forward to the public’s comments on this proposal.”  In the same article, I am quoted as saying “I have some hope that the Three-Track program will be helpful.” 

The fast-track The PTO believes that many of the delayed applications will be abandoned by the applicant prior to paying the fee to re-enter the examination process. 

Several issues need to be worked-out before the program is implemented: [More to come…]

46 thoughts on “Choose-Your-Own-Adventure: A Multi-Track Patent Examination System

  1. 46

    This is an indication that Director Kappos understands that different patent applications should be treated differently — implementing this concept could contribute to increased efficiency at the USPTO. Though I’m not yet convinced that fast/ordinary/delayed is the ideal system for categorizing patent applications, at least 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.
    link to washingtontimes.com

  2. 45

    “It’s pretty much been this way since 1776 or thereabouts”

    Didn’t realize you were that old Mooney, you certainly aren’t wise for your years.

  3. 44

    I guess what bothers me about all these ideas for change are that they do not address the real problems and seem to want to offer people with money a way to get what they want. Kind of sounds like what has happened in our whole society.

    It’s pretty much been this way since 1776 or thereabouts.

  4. 43

    if you can’t spend $100-200 a year to keep an invention alive, then why should the PTO spend any time on it?

    Because you already paid to file it and to get it examined.

    Charging annual maintenance fees is a bit perverse until the PTO can get a handle on its backlog. It’s not the applicant’s fault that his claims are sitting unexamined for 3 years or more.

  5. 42

    Charge annual maintenance fees from date of filing. If the applicant quits paying, then it goes abandoned – if you can’t spend $100-200 a year to keep an invention alive, then why should the PTO spend any time on it?

    Also have a request for examination with a 3 year time limit. It doesn’t get examined until that time and the 3 years isn’t considered a delay for PTA’s.

  6. 41

    “I guess what bothers me about all these ideas for change are that they do not address the real problems and seem to want to offer people with money a way to get what they want. Kind of sounds like what has happened in our whole society. ”

    Indeed, the same thing I was just btching about yesterday.

  7. 40

    I guess what bothers me about all these ideas for change are that they do not address the real problems and seem to want to offer people with money a way to get what they want. Kind of sounds like what has happened in our whole society.

  8. 39

    I basically agree iwht TINLA IANYL. Just fix the system. (1) move to Richmond. (2) give the examiners twice the time for initial examination. (3) Do MUCH better classificaiton so that the examiners can become specialist in narrrow fields.

    All your problems will melt away if you do those simple things.

  9. 38

    We already have two tracks: regular; and special. If the PTO wants peeps to use the special track, they can just drop the requirement for the ESD.

    I’m against a third track that would result in publication of lots of applications that never receive an examination. I just think it is a bad idea to put a bunch of art out there that has no search results or examination of the claims in the file history. That will just create a lot of confusion by making searching a lot more difficult. Following the search and exam trail in publications is the key to finding the closest art, just like following the forward and rear citations in issued patents.

    Unfortunately, there is no way to search the automated file histories of published applications to find the “forward cites.” I have been harboring the hope that the PTO will one day implement some kind of search feature that will enable that kind of investigation. But allowing published applications that are never examined will be a big step in the wrong direction.

  10. 37

    a lack of meaningful deferral in the Track III arts.

    Actually, I think the deferral part will work even better than expected, since as pointed out by Courtenay, the deferral merely “starts the clock’ later – there will still be a logjam to contend with and (without more) there will still be delay to a bottleneck of resources in those particular art fields more apt to go for Track III.

    To add to RWA’s work sharing problem, let’s not forget that any “searches” cannot be done ina vacuum, as actual patent law (which the searches are done against) is still different in different parts of the world.

    This all strikes me as “filler” until the Supremes release the Bilski decision. Per Kappos, integral to these changes are fee portions that must be set by Congress and we see just how fast they are getting their act together on patent reform (not).

    I hadn’t realized that there was a marching band on the Titanic…

  11. 36

    The problem with work sharing is that it would rely on the quality of the foreign office’s search. Applicants would flock to the office with the crappiest searches. If such measures are to be taken seriously and hope to preserve the presumption of validity, there needs to be a “certified” searching authority, or at least the search itself, wherever conducted, must be certified.

    Or, each office must submit an independent search and, if the foreign search is off the mark, the Examiner can choose to apply the independent search.

  12. 35

    Just Visiting made a great point over on Gene Quinn’s blog. It bears repeating.

    If, as we all expect, the area of technology will be the most significant factor in choosing a track, we will wind up with some art units full of Track I applications and other art units full of Track III applications. Nothing in those art units will come out any faster or slower, because the number of examiners in each art unit is highly inelastic, and every application before each examiner will have equal priority.

    The only result will be an arms race in the Track I arts that effectively forces everyone to pay the higher fee just to get normal examination priority, and a lack of meaningful deferral in the Track III arts.

  13. 34

    But, I’m sure the Wilton was only kidding.

    Les, now, you are not being cynical enough…

  14. 33

    I am guessing they would count Track III as applicant delay that would count against PTA. With the proposed changes to Missing Parts, they said taking advantage of the longer response period would be charged against PTA.

    It sounds like Track III is a graveyard for unwanted applications that you don’t have the nerve to abandon.

  15. 32

    Any suggestion from the USPTO on how patent term extensions might work in the three track system? If it’s kept the same, would the “slow” track be a way to game the patent for a longer term?

  16. 31

    “For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USPTO until the agency receives a copy of the search report, if any, and first office action from the foreign office as well as an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO. Following or concurrent with the submission of the foreign office action and reply, the applicant may request prioritized examination or obtain processing under the current procedure.”

    Is this going to be an option or an automatic procedure for this class of applications? Would a PCT with a priority claim to a foreign app fall under this category? A PCT filed in a non-US RO?

    What if the foreign OA raises issues that aren’t germane to the US? Will your foreign response create prosecution history estoppel in the US case? Will you have to obtain/file a translation of the foreign documents (OA, references, response)? What if you want to abandon the foreign case but not the US?

  17. 30

    Where to start??

    Why does Kappos think $$ is the answer, when the PTO seems to be struggling with Examiner hiring/training/retention?

    “Under Track I as proposed, applicants that request prioritized examination would be required to pay a fee set to recover the cost to the agency of maintaining the planned pendency of non-prioritized applications while expediting the examination of the prioritized application.”

    How much does it cost to hire/train/employ another examiner . . .

    If a Track III case will be “docketed” after 30 mos, does that mean it could still face another 2-3 year wait for examination?

  18. 29

    Read the article. Must be nice to get your blog and name in the WSJ.

  19. 28

    ping –
    I’m grateful for the support and defense. But, I’m sure the Wilton was only kidding. He was being ironic or sarcastic. It was said with tongue in cheek…

  20. 27

    Another good question by Les – unless others think it cynical that applicants want what’s best for themselves…

  21. 26

    Can you switch tracks?

    Lets say your on track 3 ’cause you weren’t sure of the usefulness, then you see your competitor is making moves in this area, so at 22 months you want to switch to track 1. Can you, or are you locked in track 3 for ever?

  22. 25

    So, what happens when you choose track 1, pay the fee and don’t get a first action for 20 months?

    Actually, that’s a pretty good question, considering the fact that the Office just went through a losing effort to deny people the benefits of other promises to perform within certain timeframes.

    I do not think it cynical at all – in fact, it is downright cynical to consider the question cynical.

  23. 24

    So, what happens when you choose track 1, pay the fee and don’t get a first action for 20 months?

    You consider yourself lucky, because if you’re waiting 20 months on track 1, the people on track 2 are probably waiting 40 months, and the people on track 3 are waiting for their applications to expire.

  24. 23

    So, what happens when you choose track 1, pay the fee and don’t get a first action for 20 months?

    Aren’t we cynical…

  25. 22

    So, what happens when you choose track 1, pay the fee and don’t get a first action for 20 months?

  26. 20

    Because various inventions have varying commercial time horizons, in general I think this could be a good idea. I haven’t considered all of the implications though.

  27. 17

    Could someone explain what the benefit is of running the patent life clock from filing instead of from issue?

    Ever hear tell of a fellow by the name of Lemelson? He had a pretty good business going where he would delay the grant of his patents and wind up with long patent terms in already mature technologies. It also didn’t hurt (him) that applications weren’t published at the time, but nobody reads those anyway.

    The US actually does still give you 17 years from grant, though. That’s what patent term adjustment is for. If the PTO uses up more than 3 years of your 20-year term in prosecution, it makes up the difference at the end. Yay, pretend harmonization.

    I would also argue against publication before the later of 18 months or the filing of the applicant’s response to the FOAM.

    The PTO is trying to go the other way, by examining applications before 18 months. The statute promises 14 months. Quicker examination is a better fix than slower publication.

  28. 16

    I would also argue against publication before the later of 18 months or the filing of the applicant’s response to the FOAM. — Babel Boy | Jun 03, 2010 at 12:09 PM

    Not well put. I meant: I would also argue that publication shouldn’t occur before the later of 1) 18 months after filing or 2) the filing of the response. . .

  29. 15

    constitutes a failure of an applicant to engage in reasonable efforts

    ??? Sorry IANAE, I am not following you on how selecting any proffered Office option can in any way constitute an unreasonable effort.

    I know you be right, I just don’t see how.

  30. 14

    Could someone explain what the benefit is of running the patent life clock from filing instead of from issue? I know the US did it for “harmonization”, but is there any good reason? Why did the Europeans do it in the first place?

    I guess an argument could be made that there is the potential for retroactive protection from the date of publication and so patent life should run from publication, but what is the point of running it from filing? Just to “justify” the enormous EPO annual maintenance fee?

    I would also argue against publication before the later of 18 months or the filing of the applicant’s response to the FOAM. This gives applicant a chance to defer the decision of whether he wants to disclose the invention to the public until after he sees the rejections.

    Running patent life from issue, or publication, combined with the option of delayed examination would go a long way to eliminate the backlog.

  31. 13

    “Pay for play” also benefits small inventors. Issued patents can be leveraged to generate capital. For example, they can be used as collateral on a loan or to attract investors. As infusions of capital are generally needed at various stages in product development, the quicker a patent issues the easier it becomes to get the invention to market.

  32. 11

    Separate examination fees (“You really want this application examined? Pay us an extra $1,000 or it won’t happen.”) would also help reduce the backlog. Providing a window prior to the first action on the merits in which the applicant could expressly abandon his application and get his filing fee back would help some as well.

  33. 10

    I can already hear the small inventors screaming that “pay for play” benefits the big boys. I can’t say I am a big fan of this idea either.

  34. 9

    Oh, and I suppose it goes without saying that opting for the slow track constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Otherwise, the ensuing patent term adjustments could be quite significant indeed.

    Which also makes me wonder whether certain companies would opt for the middle track in the hopes of still encountering some delay and scoring some PTA in the bargain.

  35. 8

    Ping,

    Yes. It is important to remember that “substantially equivalent” under sec. 510(K) of the Food Drug and Cosmetic Act means something different than it does in patent law. For example, a new electrode configuration for a pace maker that allows for an even distribution of current across the heart or better lead attachment could be patentable because it is novel and nonobvious. It would, however, be substantially equivalent under 510(k) because it is still applying a voltage to the heart to prevent a cardiac episode as do existing pace makers.

  36. 7

    Zak,

    Do you see many patentable inventions that are “‘substantial equivalent’ to an existing device“?

  37. 6

    This could actually be a very good thing for the medical device industry in which I practice. Like pharmaceuticals, it is an industry regulated by the FDA and approval is required before a product can be sold. Depending on the device there are two regulatory pathways a company can take. If the device is “substantial equivalent” to an existing device (i.e. uses similar methods to elicit a similar therapeutic effect so safety and efficacy are not seriously doubted) then a short 510(k) approval route can be taken. Generally this route takes less than two years. If the product does something new or is a high risk device do to its nature then the longer PMA process has to be followed. This is similar to the process required for drug approval.

    If the invention is likely to go down the 510(k) approval pathway then paying for the fast-track examination would seem logical so that the patent issues close in time to when the device is introduced to market.

    If a long FDA approval process is most likely then the reduced fee delayed examination would appear to the best option. This would allow changes to be made to the claim scope and the filing of continuing applications to reflect alterations made to the device as a result of the outcome of clinical trials.

    I am curious if those practicing in other industries would find this “choose-your-own-adventure” approach helpful.

  38. 5

    The goals for handling applications in this queue would be to provide a first Office action on the merits within four months and a final disposition within 12 months of prioritized status being granted.

    No more examination support documents, then? Sounds good to me.

    I wonder if not immediately docketing an application for examination is technically ultra vires section 131, but it doesn’t seem like anybody would have reason to complain.

  39. 3

    USPTO Press Release:

    USPTO Proposes to Establish Three Patent Processing Tracks

    Initiative would provide applicants greater control over the speed of patent examination, reduce pendency and enhance work sharing between intellectual property offices

    Public meeting to be held on July 20; comments welcome

    WASHINGTON – The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking public comment on a proposed new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process. The new “Three-Track” program aims both to provide applicants with the timing of examination they need and to reduce pendency of patent applications.

    “We recognize that the traditional ‘one-size-fits-all’ examination timing may not work for all applicants,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By allowing applicants greater control over the timing of examination, the USPTO will be able to deploy its resources to better meet the needs of innovators. We look forward to input from the public as we shape this proposal.”

    Under the proposed “Three-Track” initiative, for applications filed first in the United States, an applicant may request:
    Track I: prioritized examination
    Track II: traditional examination under the current procedures
    Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.

    Under Track I as proposed, applicants that request prioritized examination would be required to pay a fee set to recover the cost to the agency of maintaining the planned pendency of non-prioritized applications while expediting the examination of the prioritized application. Input from the public on the technologies where the prioritization requests are most likely will be useful in setting this fee. The goals for handling applications in this queue would be to provide a first Office action on the merits within four months and a final disposition within 12 months of prioritized status being granted.

    For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USPTO until the agency receives a copy of the search report, if any, and first office action from the foreign office as well as an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO. Following or concurrent with the submission of the foreign office action and reply, the applicant may request prioritized examination or obtain processing under the current procedure. This proposal would increase the efficiency of the examination of these applications by avoiding or reducing duplication of efforts by the office of first filing and the USPTO.

    Overall pendency would be decreased in four ways:
    1. increased resources in Track I would result in increased output
    2. reuse of search and examination work done by other offices would result in greater efficiency
    3. applicants who chose Track III because their applications were of questionable value might ultimately not pursue their application examination.
    4. applicants with applications first filed abroad might ultimately not pursue their application examination.

    Public input is also requested on a proposal to provide for supplemental searches performed by other intellectual property granting offices at an applicant’s request.

    A public meeting will be held on July 20 at 1:30 p.m. at the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia. Those interested in attending the meeting must register by 5:00 p.m. (EDT) July 16.

    Written comments must be submitted by August 20, 2010.

    Additional details on the program will be available in the June 4, 2010 edition of the Federal Register.

    For non-press inquiries, contact Robert A. Clarke, Deputy Director, Office of Patent Legal Administration by phone at (571)272-7735 or by e-mail, Robert.Clarke@uspto.gov.

  40. 2

    I used to love choose your own adventure books. Now it’s just multiple parallel rule sets to memorize. No thanks.

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