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Get Your Application On The Fast Track - For A Price

On Friday, the PTO proposed changes in the rules to permit applicants for U.S. patents to receive “prioritized examination” (76 Fed. Reg. 6370 (Feb. 4 2011) – a copy is attached below). This program is a remnant of the three-track examination the PTO proposed in June 2010, whereby applicants could pay to delay examination for 30 months, pay to accelerate or do nothing.

Apart from the $4000 fee, there are few formal requirements. Claims must be kept to four independents and 30 total, but there is no longer a search and analyze requirement as there is in the seldom-used accelerated examination program. Note that, right now, there is no break for small entities and the goal of concluding prosecution within 12 months only means that applicants get at least two actions. And applicants better be ready to move it — if an extension of time is requested, special status is lost. This program will be first-come, first-served for the first 10,000 applications to apply.

I am not sure whom this program is intended to benefit (or if any thought has gone into this). The price will deter most universities, who can barely afford to file provisionals. However, the occasional lucky university with a big-name licensee and a hot invention may decide to get on the track. I can also see this program being used by big pharma to get “add-on” patents to list in the Orange Book as the primary patents covering Rx drugs approach expiration. The program could also help start-ups, many of which need to demonstrate the patentability of their core innovations to investors. The class of applicants who will need to decide quickly are those who have pending provisionals or PCTs when the rules are adopted, and that may be fairly soon. Since the rules are not retroactive, it may be a good idea to delay filing regular U.S. applications on inventions that would benefit from early allowance.

Fed Reg 2_4_11


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