Fast-Track Your Patent – Part Two: Timing

This post is one part of a multi-part series on expediting the patent process.  It will be updated with links to other parts, as they become available.  Quick links to: part one, part two.

Scenario: The Long Haul

Consider: You filed your patent application five or six years ago, and despite several back-and-forths with the Examiner, it still has not issued. You probably have even filed a few RCEs (Requests For Continued Examination). The process seems to be taking forever.

You recently heard about the PTO’s Track One Prioritized Examination Program (see part one of this feature). According to this program (and it’s a good one), with a proper Track One request, the PTO will issue a final disposition for your application in around 12 months. Ruefully, you think to yourself, the Track One program was not even available back when the application was first filed. If only there were ways to take advantage of it now.

It’s Not Too Late

The Track One program has two timing windows, and is not limited to the more common window of first filing.

More specifically, according to this more common timing window, when filing an original applications, the Track One request must be made on the same day as when the application itself is filed. See 37 C.F.R. § 1.102(e)(1): “The request for prioritized examination in compliance with this paragraph must be present upon filing of the application … .” The Track One request cannot be filed later then the filing date, not even one day later.

But according to the second timing window, a Track One request can be filed on or after the filing of an RCE. The only requirement for this second window is that the request must be filed before the mailing of the first Office action after the filing of the RCE. See 37 C.F.R. § 1.102(e)(2).

Here’s how it helps: Say your application has been languishing with no real progress for several years. The Examiner issues a final rejection, and you intend to file an RCE so as to re-open prosecution and advance new arguments and/or new amendments.

When you do so, also consider filing a Track One request. The PTO decides on these requests relatively quickly, probably within a few weeks. If granted, then your application will be expedited, with a final disposition within around 12 months afterwards.

The main requirement when filing a Track One request with an RCE is the fee. Currently, the fee for a large entity is $4,000, but many are eligible for a reduced fee. For small entities the fee is $2,000 and for a micro-entity the fee is $1,000.

A Few Caveats

Filing a Track One request does not guarantee a patent — it only guarantees quick action by the PTO up until “final disposition”. In PTO parlance, “final disposition” includes more than just the Notice of Allowance that you’re looking for. A “final disposition” also includes a final rejection. So you might find yourself in the same general situation with an obstinate Examiner. The main difference is the speed getting there.

In addition, the RCE route for Track One requests is available only once per application. If you need to file follow-on RCEs, you can’t file another Track One request. Consider instead the filing of a brand new continuing application, with a Track One request. The PTO fees would not be that different.

There are other considerations beyond these, and of course you should consult with your patent attorney before making any decisions.


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Links to other parts

Read Part One here.

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