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by Myrna Schelling

The US Patent and Trademark Office’s Track One Prioritized Examination program was implemented as part of the America Invents Act in a final rule published on September 23, 2011.  The Track One program allows for an applicant of a U.S. utility or plant patent application to obtain a final disposition within 12 months.  In other words, Track One is a means to “fast track” patent prosecution with the US Patent and Trademark Office.  

At its onset, the Track One program required for applicants to meet certain requirements.  Specifically, in order to successfully file for Track One, in the past, upon filing of the application, the inventor’s oath or declaration must be filed and all required fees must be paid at the time of filing.  Further, the program initially required that an application must have no more than four independent claims, no more than thirty total claims, and must have no multiple dependent claims. If any of these requirements were not met, under the original program, the Track One Request by the applicant would be denied outright.

On November 14, 2014, a final rule changed the Track One program significantly.  The submission of an inventor’s oath and declaration may be postponed and filed after the filing date of the application, if an executed application data sheet (ADS) is filed with the original patent application filing.  Further, the final rule states that if an application has more than four independent claims, more than thirty total claims, or has multiple dependent claims, the  applicant is given a non-extendible period of 30 days to amend or cancel claims in order to meet this requirement.  Finally, the final rule further states that excess claim fees and application size fees are not required to be paid at the filing date of the application.  Instead, the applicant will be given more time to pay the fees as set forth in a fee deficiency notice after the filing of the application.

As a best practices tip, even though the November 14, 2014 final rule relaxes the Track One submission requirements, it is best to meet all the requirements of Track One program at the time of filing the application, so as not to delay the prosecution of a Track One application and to hopefully meet the stated goal of a final disposition within 12 months.  But, in the event that certain requirements cannot be met at the time of filing, it is gratifying to know that an applicant’s Track One request will not be summarily dismissed thanks to the final rule.  Instead, the applicant will have an opportunity to cure the defects in his or her filing.

The final rule regarding the recent changes on the Track One Prioritized Examination Program as described herein can be found here:  http://www.gpo.gov/fdsys/pkg/FR-2014-11-14/pdf/2014-27037.pdf