Since 2011, prioritized examination has been available for U.S. patent applications via the Track One pilot program. Now, the newly announced Fast-Track Appeals program provides the opportunity to request prioritized examination of Appeals as well. We introduce both programs below and provide some insights as how they might be used.
The Track One prioritized examination means that the USPTO will aim to provide a Final Office Action (commonly a second technical office action) in less than a year. Consequently, the examination process is started much faster than normal, as the average time to the first Office Action is around 14 months. This is meaningful as any information within Office Actions obtained within the priority year may be used when considering any corresponding patent filings in other countries.
The Track One program requires a substantial fee (4000 USD for large entities), which may reduce its attractiveness with cost-sensitive applicants. The USPTO discount policy applies to the Track One fee as well, which means that small and micro entities may request Track One for 2000 USD and 1000 USD, respectively. Track One is available for most types of patent applications with certain restrictions, but reissue applications are excluded from the program.
Fast Track Appeal
In situations where the applicant and the Examiner disagree regarding the patentability of the application, the first instance of appeal is the USPTO’s Patent and Trial Appeal Board (PTAB). Depending on the situation, the appeal process may require extensive work from the U.S. patent agent to ensure that the Appeal Brief properly lays out the facts of the case along with the arguments for patentability and any relevant case law. Another factor which affects the decision to file an appeal is the relatively long time it takes for the USPTO to handle appeals, as the average time to decision is 14 months. The appeal process may thus “freeze” the patent process for some time.
The USPTO has now announced a new Fast Track Appeal pilot program, which allows requesting expedited processing for appeals for a moderate fee (400 USD, no fee reductions). When expedited processing is requested, the PTAB will endeavor to reach a decision within 6 months of the request. The Track One programs and the Fast Track Appeal programs are separate entities. Thus, requesting Track One expedited prosecution of a patent application will not result in expedited processing of an appeal in that application. Nor will requesting Fast Track Appeal expedite the prosecution of the patent application being appealed. During the next year, the USPTO will accept only 500 Fast Track Appeal requests, and the program will terminate in summer 2021. The USPTO has generally continued expired pilot programs with minor changes, so it may be that expedited processing for appeals is here to stay.
The Fast Track Appeal pilot program continues the USPTO policy of providing faster processing in return for a fee. While the Track One program speeds up the early stages of the patent application process for a substantial fee, the Fast Track Appeal program is aimed at allowing applicants to obtain a decision on appeal quickly. The expedited appeal process along with the moderate official fee will most likely result in more situations where an appeal is the best way to proceed. However, the appeal process is still costly for applicants and the pilot program does not reduce the costs of appealing. As every patent application is different, expert advice should be taken when considering the use of either of these pilot programs.
Disclaimer: This post is provided for educational purposes only and does not constitute legal guidance.