This weekend, many provisions of the America Invents Act, passed on September 16, 2011, will finally be implemented. One of the biggest changes, however, has already been in place since the law's passing: the Track One Prioritized Examination ("fast track"). The short version of Track One is that you pay a bit more up front and end up with your patent faster, and according to some accounts, cheaper. Let's take a quick look at some things in-house folks should be aware of:
The Fast Track
The Track One expedited process is relatively simple: file a one-page application, skip the pre-filing research, pay an increased fee, and get your patent within twelve months. The fee is $4,800 for larger entities or $2,400 for entities with fewer than five hundred employees.
Existing Expedited Procedures
Before Track One, there were three other ways to get an expedited review. The Accelerated Examination process is the most similar, though it requires the applicant to do a pre-examination search and prepare specialized reports. It does, however, carry the benefit of a smaller filing fee. The Patent Prosecution Highway is for those who have had favorable decisions from other countries' patent offices, such as Japan or Korea, and does not require a hefty upfront fee. The final method is the Petition to Make Special based on an applicant's age or health, but this only applies to those who are 65 or older or who have a serious medical condition.
Is the 'Fast Track' Best?
According to research published on the ever-brilliant Patently-O blog, it certainly is. Despite its higher upfront cost, the lack of a prefiling search and the fewer pushbacks from the patent filing office mean most applicants would save money by using the Track One system, especially so if the applicant qualifies for the smaller-entity reduced fee.
The study also found that the time from filing to allowance was significantly shorter for Track One applicants, at an average of 184 days. Accelerated Examination filings took an average of 317, Patent Prosecution Highway applications averaged 565 days, and as for the elderly and ill applicants -- they waited an average of 806 days.
What Applications Qualify?
The requirements for a Track One application are relatively simple:
- File electronically;
- The application should contain no more than four independent claims and thirty total claims (with no multiple dependent claims);
- Pay the fees ($4,800, or $2,400 for smaller entities);
- Respond to USPTO actions within three months to stay on the fast track
It's also important to note that there are a maximum of 10,000 slots available per year. So far, the highest number of applications in a single fiscal year was FY2012, with 5,027, though that number will likely rise as awareness of the benefits of Track One increases.
- Ten Days to the AIA: Three Things to Know (FindLaw's In House Blog)
- The America Invents Act Is a Game Changer for Patent Seekers (FindLaw's KnowledgeBase)
- USPTO's Prioritized Patent Examination Program FAQs (USPTO.gov)