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New PTO Program Provides a Fast-Track to Innovation

UPDATE:  The FY2011 budget recently passed by Congress and signed into law has capped expenditures by the PTO at an amount less than its expected revenues. Because the PTO now could not use the fees collected under the "Track One" program (discussed below) to cover the additional costs incurred for those applications, the PTO has indefinitely suspended implementation of the Track One program. It has also frozen all hiring, so the backlog of applications awaiting examination will likely not be addressed this year. However, the current version of the pending patent reform act would allow the PTO to keep the fees it collects, even in FY2012. We will continue to update this story as it develops.

Due to the large number of applications queued for examination, a typical patent application may take two to three years, and sometimes seven or more, from the time the application is filed to the time the U.S. Patent and Trademark Office (PTO) takes its first substantive action on that application. Under certain circumstances, an applicant can ask the PTO to make the application “special,” which, if the request is granted, moves the application ahead of the non-special applications in that technology area in the queue for examination. The special circumstances in which this accelerated examination may currently be granted include: when an applicant is aged 65 or older, or is terminally ill; when the application claims technology directed to environmental quality, the development or conservation of energy resources, or countering terrorism; and in certain international filing situations. While the accelerated examination program can dramatically reduce examination time for a patent application, when the basis is other than the age or health of an applicant, the program requires the applicant to provide statements in its initial application that could be extremely harmful to the long-term value of the application.

On April 4, 2011, the PTO announced a new prioritized examination program known as Track One, which is one of the tracks of its proposed three tracks for patent examination. Under the proposal, Track One applications will be processed the fastest, Track Two applications will be processed under the current examination procedure, and Track Three applications will receive delayed processing. The PTO’s main goal in implementing prioritized examination under Track One is to provide a final disposition of the application within a year of the application being filed. The PTO is accepting only 10,000 applications from May 4, 2011, until Sept. 30, 2011, the end of fiscal year 2011, at which time the cap will be revisited.

The government fee for putting an application under Track One is $4,000 in addition to standard application and publication fees, and the PTO plans to offer a discount to qualifying entities if legislation is passed that authorizes such a discount. For more information about the PTO’s Fast-Track program, please contact the Corporate and Transactional Practice Group at Bingham Greenebaum Doll. Special thanks to Bingham Greenebaum Doll associate Kevin Dawson for his assistance in developing this article.

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