Patent Examination Multi-track System Proposed

June 3rd, 2010

In 2009 patent applicants waited an average 36 months after filing for examination.  Although a few applications can be advanced out of turn, these must either fall into narrow specialized categories, or be filed using the existing expedited examination process.  Many practitioners disfavor the current expedited case system due to its increased prosecution cost, and because the mandatory examination support documents can inadvertently affect patents in litigation.  In response, the Office proposed on June 3, 2010 a three-track system using tiered filing fees.  Under the proposal, applicants seeking a faster path to examination could pay elevated fees and advance out of turn.  The system, intended to take effect in 2011, was designed to address budget shortfalls and the Office’s current case backlog.  Intended system benefits include a slower examination for inventors still perfecting or trying to market their inventions, and a faster examination option for others.  Critics fear that poorer inventors may be left behind by the system, and also argue that companies might use slower examination to hide technology from competitors although the current 18 month publication rule helps avoid this problem.  The Patent Office is currently seeking comments on the plan through its website.