Keeping Track of Track One

Author: Stephanie M. Sanders

The USPTO’s prioritized patent examination program—known as Track I—provides for final disposition of a U.S. utility or plant patent application within twelve months from the date on which the Track I request is granted. The USPTO also allows applicants to file a Track I request in conjunction with a Request for Continued Examination (RCE). Applicants who are interested in reducing patent application pendency may prefer Track I to the USPTO’s current accelerated examination program because there are fewer requirements to meet and the applicant is not required to undertake a potentially costly and possibly risky pre-examination search.

Track I may be requested upon filing a utility or plant patent application, including a continuation, divisional, or continuation-in-part application.  Track 1 is not available for reissue or reexamination applications.  If not previously requested in the application, a Track 1 request may also be submitted with or after filing an RCE but prior to receipt of an Office Action on the RCE.  A Track 1 application must also contain no more than four independent claims and thirty total claims, and no multiple-dependent claims.

The Track I filing fee is currently $4,000 (or $2,000 for a small entity), and is charged in addition to the normal filing, search, publication, and examination fees, which currently total $1600 for a utility application ($800 if small entity), a processing fee of $140, and any additional claims or size fees.

According to the Federal Register Notice issued on March 5, 2014, the USPTO has now eased the formal requirements for obtaining Track I prioritized examination of a new application (i.e., not an RCE). The Office will accept Track I requests even if the application is filed:

  • without an executed inventor’s oath/declaration, if an application data sheet (ADS) setting forth the information required by 37 CFR § 1.53(f)(3)(i) is filed;
  • without excess claim fees and/or excess size fees (but the filing fee, search fee and examination fee must be paid at the time of filing); and
  • with more claims than the required Track 1 limits as long as any excess claims are canceled  within one month of a first decision on the request for prioritized examination.

The relaxed requirements apply to all Track I requests filed on or after September 16, 2012 (even if previously rejected) as long as a first Office Action has not yet been mailed in the case.

In addition, Applicants with a rejected Track I request that would have been accepted under the new rule may request reconsideration from the USPTO Office of Petitions if:

  1. The application is still pending;
  2. the application contains, or has been amended to contain, no more than four independent claims, no more than thirty total claims, and no multiple dependent claims; and
  3. a first Office action has not been mailed in the application.

The USPTO has also provided a new Track I Request form, which is accessible online at: http://www.uspto.gov/forms/aia0424.pdf.

More information about Track I can be found on the USPTO’s Prioritized Patent Examination Program webpage.

 

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