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03.22.2011 | Legal Advisory

The White House’s recent launch of its “Startup America” initiative formally introduced the flexible “Three-Track” patent examination program.  This program is intended to give applicants more control over the processing of their patent applications, while simultaneously providing a more efficient process for getting innovation to market.  

Under the Three-Track program, applicants can choose whether to request prioritized examination of an original non-provisional application (Track I), obtain standard processing under the current procedure (Track II), or request a delay lasting up to 30 months (Track III).  Accordingly, inventions that are closer to being “market-ready” (e.g., those seeking capital or accelerated market penetration) might benefit from the “fast track” option, while more nascent inventions might benefit from the extended timeframe of Track III.  

Although the details of the Three-Track program are still being finalized, Director Kappos of the United States Patent and Trademark Office (USPTO) indicated that the “fast track” option will be implemented immediately due to the public’s overwhelming support following the initial publication for comment of the Three-Track program in June 2010.  A notice of proposed rulemaking on Track I was published in the Federal Register on February 4, 2011.

Under Track I, applicants will have the opportunity to have an original U.S. non-provisional application fully examined within 12 months of its filing date for a proposed fee of $4000 (though a reduced fee is being proposed for small entities).  Additionally, applicants claiming priority to a foreign application that has not yet received a first office action in the priority country can also request prioritized examination.

Track I applications will be limited to four independent claims and 30 total claims and must be filed through the USPTO’s electronic filing system.  Though applicants will not be prohibited from requesting extensions of time, such extensions will terminate the prioritized examination with no refund of the Track I fee.

In the first year, the USPTO will be limiting the program to 10,000 Track I applications to ensure that each of the expedited applications are examined within the 12 months.  Refunds are not available if the 12 month goal is not met, as the applicant still will have received “advancement of examination.”

This advisory was prepared by Nutter’s Intellectual Property practice.  For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances.  Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.