Those who have been following implementation and practice under the Leahy-Smith America Invents Act have focused on the major revisions it made to U.S. patent law, such as changing the U.S. to a "first inventor to file" system, and adding inter partes review and post-grant review. Perhaps less attention has been paid to Section 25 of the AIA, but there is a very handy provision added to the patent statute by that section.

That section adds a new subsection to 35 U.S.C. § 2. That new subsection, 35 U.S.C. § 2(b)(2)(G), creates a fast track examination. Under that section, the PTO

may, subject to any conditions prescribed by the Director and at the request of the patent applicant, provide for prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization, notwithstanding section 41 or any other provision of law.''

Following passage of the America Invents Act, the PTO amended 37 C.F.R. § 1.102 to provide for prioritized examination. Under the new rule, a request for prioritized examination may be made by filing a petition, accompanied by the prioritized examination fee set forth in §1.17(c), the processing fee set forth in §1.17(i), and if not already paid, the publication fee set forth in §1.18(d). The required petition is a simple, one-page form. An application for which prioritized examination has been requested may not contain, or be amended to contain, more than four independent claims, more than 30 total claims, or any multiple dependent claim. A request for prioritized examination may be filed with an original and complete non-provisional utility or plant application, and any fees due must be paid at the time of filing. If the application is a utility application, it must be filed via the PTO's electronic filing system, and it must be filed at the same time as the application.

Alternatively, a request for prioritized examination may be filed with or after a request for continued examination (RCE). If the application is a utility application, the request must be filed via the PTO's electronic filing system. The request can be filed with the RCE, but in any case must be filed before the mailing of the first Office action after the RCE.

Only a single request for prioritized examination will be granted in an application.

The PTO has already begun accepting requests for prioritized examination of patent applications through its Track One Prioritized Patent Examination Program. This program permits inventors and businesses to have their patents processed to completion in 12 months, which is about one-third the time it would normally take. There is, of course, a fee, but it is not necessary to submit "examination support documents."

According to the PTO, as of the beginning of March 2012, about 1,700 Track One petitions have been filed. It takes about six weeks, on average, for the PTO to decide on a petition and get the application to completion of pre-examination processing. This shaves about a month of application pendency.

About 1,250 of the approximately 1,700 requests submitted have already been decided by the PTO, and a little more than 1,200 of them have been granted, a 98.9 percent approval rate. About 650 Track One prioritized applications have already received a first Office action. According to the PTO, first actions in Track One applications are issuing about one month after approval of the petition. The longest it has taken to issue a first action is 70 days from grant of the petition.

So far, since September, 23 allowances have already been issued on Track One applications. For those applications, the average time to allowance is less than six weeks from approval. The record is 37 days after the application was filed. The first Track One application was filed Sept. 30, 2011, and issued as a patent on Jan. 10, 2012, a period of about three and a half months.

The PTO maintains that Track One applications will be treated no differently from other applications in terms of grant/denial rate. In fact, the PTO maintains that examiners are being given exactly the same training, credits and incentives to accurately examine Track One cases as for all other cases, and that the PTO is not giving any training, credits or incentives that would bias examiner decisions in any way.

Clearly, Track One is a valuable procedural tool to reduce application pendency and get a patent quickly for inventions in fast-moving technologies, or where competitors could easily copy, or already are copying, the invention. A Track One petition, coupled with a request for early publication, has the potential to maximize the effectiveness of any patent.

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