USPTO relaxes formal requirements for Track I (and does it retroactively)

Track I (also called “prioritized examination”, and not to be confused with Accelerated Examination) has been available since September of 2011, and permits a patent applicant to move to the front of the examination queue upon payment of an extra $4000 (smaller for small and micro entities).  USPTO has relaxed the formal requirements for Track I as of March 5, 2014.

Importantly, the rule change is retroactive.  If a filer screwed up a Track I request in the past and had it dismissed, the filer may be able to get the request granted now by filing a petition.

Track I has many formal requirements such as a limit of four independent claims and thirty total claims and no MDCs (multiple dependent claims).  Since September of 2011 the rules for Track I required that on filing day every formal requirement had to be satisfied — among them that the signed inventor’s declaration be present in the application on filing day, any independent claims beyond four already canceled, any total claims beyond thirty already canceled, any MDCs already canceled.  All needed fees had to have been paid on filing day, including all excess-claims fees and application-size fees.

It seems that USPTO found it was having to dismiss lots of Track-I requests due to filers screwing up the formal requirements.  Sometimes the inventor’s declaration would be missing.  Sometimes there would be a fifth independent claim in the case, or a thirty-first total claim, or a multiple dependent claim.  Maybe there were between twenty-one and thirty total claims and the filer had failed to pay for total claims beyond twenty.  Maybe there were four independent claims and the filer had failed to pay for that fourth independent claim.  Maybe there were 101 pages in the application and the filer had failed to pay for that 101st page.  From the USPTO’s statistics it appears that USPTO was having to dismiss about six percent of all Track I requests — for example in 2013 dismissing 477 requests out of 6874.  As of a few months ago, some nine hundred requests had been dismissed.

In such cases USPTO would dismiss the Track-I request and, I assume, would keep the $4000 for its troubles.  The application would then enter the normal queue for examination, taken up only after any previously filed applications in the queue.

I imagine those nine hundred filers who had lost their Track-I fee ($4000 in many cases) were disappointed about it.

In a Federal Register Notice dated March 5, 2014, the USPTO relaxed the rules for Track I.  Now, if the filer screws up and files a Track-I case that flunks one of the above-mentioned formal requirements, OPAP (Office of Patent Application Processing) will mail a Notice of Missing Parts, giving a non-extendable one-month period to correct the screwup.  The filer will then have one month to cancel the offending independent claims beyond four, or the offending total claims beyond thirty, or the offending MDC.  The filer will have one month to hand in the missing excess-claims fees or the missing application-size fees.  The filer will have one month to hand in the inventor list (and the filer will be able to postpone handing in the signed inventor declaration until allowance).  Importantly the filer will not lose the $4000 or the Track-I opportunity so long as the filer gets the screwup corrected within the non-extendable one-month period.

USPTO chose to make the new rules effective on publication day, that is, on March 5, 2014.  Comments may be filed up until May 5, 2014.  I predict that no one will file any comments.

Now here is an important action item.  Anyone who screwed up a Track-I request in the past and had it dismissed has an opportunity now to salvage that lost $4000 and to get the case onto Track I.  The requirements are:

• the application was filed on or after September 16, 2012
• the application is still pending
• the application has not yet received a first Office Action
• any independent claims past four have been canceled
• any total claims past thirty have been canceled
• any MDCs have been canceled
• a petition is filed requesting reconsideration of the dismissal of the Track-I request.

So each of those hundreds of filers who screwed up a Track-I request on a case filed on or after September 21, 2012 needs to see of their case is still pending and has not received a first Office Action.  If so, a modest-cost petition will probably permit salvaging that $4000 fee and getting the case onto Track I.