USPTO Recognizes That One Size Does Not Fit All

The United States Patent and Trademark Office (USPTO), in an attempt to offer patent applicants more choices, recently proposed establishing a three-tiered examination system. Under the current system, with the exception of accelerated examination and those cases granted “special” status, all non-provisional patent applications go into the same queue for examination and are taken up in due course. Under the new proposal, an applicant would be able to choose either prioritized examination (Tier I), traditional examination (Tier II) or delayed examination (Tier III).

USPTO’s Goal is to Reduce Time to Issuance to One Year
Currently, a first office action occurs on average at 27.2 months and a patent takes, on average, 34.6 months to issue.

Tier I priority examination, is shooting for 4 months to first office action and 12 months to issuance. The goal of the proposed amendment is to provide applicants more flexibility in managing prosecution, reducing prosecution pendency, and enhancing efficiency, all without impacting the current workload or time to issuance of traditional (Tier II) applications.

Good Practices to Speed Up Any Examination
To achieve such a quick turn around, a priority application will be placed in a queue for all priority applications separate from Tier II cases, ensuring they will be taken up and considered in a more timely manner. Applications claiming priority from prior filed foreign applications will have to wait a bit and furnish some additional information before jumping onto the Tier I examination track. As explained in the Federal Register, to maximize the benefits of the priority examination, an applicant should be knowledgeable of the prior art, draft claims as broad as possible in view of the art and as narrow as one is willing to accept, respond within the shortened statutory periods, and be prepared to conduct examiner interviews.

Speed Comes With a Price
Anyone seeking to utilize Tier I or prioritized prosecution will be required to pay an additional fee to cover the priority request. The as yet-to-be-determined fee, will be used to hire and train the additional examiners needed to ensure that priority examination can be completed within the projected time frames. Additionally, to facilitate the processing of Tier I applications, the USPTO is considering limiting the number of claims in a Tier I application to 4 independent claims and 30 total claims.

Tier III examination on the other hand will allow an applicant to defer docketing of an application for review for up to 30 months after filing. By choosing to delay examination, an applicant can explore the market and focus on commercialization. If at any time during that 30 month period, the applicant deems the invention worth pursuing, they can request examination (and pay the fee) anytime prior to the expiration of the period. Failure to request examination will result in abandonment. The realization that one size does not fit all is a refreshing and welcome attempt by the USPTO to speedup the examination process and offer an applicant more choices.

You may also like...