Patent Office Seeks Input on Three-Track Examination Proposal

Lora Bentley

For years now, experts and observers have claimed the U.S. patent system is broken. They all have different ideas about why and how to fix it. Congress floats some kind of reform legislation every year, it seems, but nothing that requires significant change has made it all the way through.the process. (Maybe this is the year?)


One thing most do agree on, however, is that the U.S. Patent and Trademark Office (PTO) is understaffed, underfunded and incredibly backlogged. Matthew Schantz, a partner and patent attorney in the Indianapolis law firm of Bingham McHale told me last year that on average, the time between application and substantive feedback from the PTO is six years for software patents. At the time, he said:

I would like for them to hire more examiners and pay them better... If people aren't learning to be good examiners and bringing their technology experience with them, I think it's hard for the Patent Office to develop examiners with solid backgrounds who are able to do the job efficiently.

Well, the PTO hasn't suddenly come into a huge windfall, so there probably won't be a bumper crop of new examiners coming in soon. However, PTO Director David Kappos announced earlier this month that the office is considering a new three-track patent-examination system rather than the current "one-size-fits-all" process. According the press release, patent applicants can choose one of three examination tracks:

  • Prioritized examination. For an additional fee, applicants requesting prioritized examination could expect first action from the PTO within four months and final action within 12 months.
  • Traditional examination. Applicants for traditional examination would receive examination under the current procedures at the current fees. The time frame from application to first action and first action to final action would, of course, still vary.
  • Delayed examination. Those with non-continuing applications first filed in the PTO can request "an applicant-controlled" delay of up to 30 months before the application is docketed for examination.


Though the PTO did not specify how much the additional fee for prioritized examination would be, Reuters reports Kappos said, "The fee will certainly be non-trivial."


The PTO will host a public meeting to discuss the proposal on July 20. Written comments must be submitted by Aug. 20.

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