Posted: 05 Apr 2011 09:54 AM PDT
The new prioritized examination system known as "Track One" will begin on May 4, 2011. For a $4,000 fee, the USPTO will prioritize the handling of your patent application with a goal of reaching a final disposition within twelve months. A prioritized application is "accorded special status and placed on the examiner's special docket throughout its entire course of prosecution before the examiner until a final disposition is reached." Here, of course, "final disposition" means that the application is either allowed, abandoned, or is subject to a "final rejection" (which can then be appealed).
* Application must be filed on or after May 4, 2011 using the the USPTO's electronic filing system;
* Application must be "complete;"
* The request for prioritized application must be filed with the application itself;
* Application may contain no more than four independent and thirty total claims; and
* The $4,000 fee must be paid in addition to the normal filing fees. Without congressional legislation, the USPTO asserts that it cannot offer a small-entity discount.
Due to resource constraints, the PTO is limiting the track one initiative to 10,000 applications for the May-Sept 2011 period (the remainder of FY 2011).
The $4,000 fee was set after the USPTO estimated the average cost to the Office of performing the service.
What is that supposed to mean??
The new prioritized examination system known as "Track One" will begin on May 4, 2011. For a $4,000 fee, the USPTO will prioritize the handling of your patent application with a goal of reaching a final disposition within twelve months. .
To me, that seems like a particularly bad idea for table game inventors right now. I was just reading earlier today, actually, about current 101 rejections on board and card games. The BPAI is currently taking a dim view of card games and has been upholding a *lot* of 101 rejections. See Ex Parte Ward for a recent example of where the BPAI upheld an Examiner's 101 rejection.
RichN posted a few months back about how he used the new Bilski guidelines to successfully overcome a 101 rejection. I'd love to read the FH on that one, assuming it's on PAIR. Rich, if you read this, what was the app #?
Disclaimer: do not take this as legal advice. I am not an attorney.
As someone who has filed several patents,
I have a friend who patented 2 inventions that made a lot of money for him. He said the patent process was so long, so expensive, and so horrible, he'd rather sell his stuff without a patent, its not worth the hassle of getting one.
As I told him, I don't have a problem with a fast track as proposed, at least in theory. I do have a problem with the fact that regular examination at the patent office has been painfully slow for many years now, patent examiner turnover seems extremely high, and the level of professionalism and quality of examination has significantly decreased over the last decade.
PTO resources are clearly limited. I'm concerned that implementation of this fast track will just cause more of a drain on those already limited resources and cause further delay for the non-fast track applications. I'm also not convinced that there will be a significant enough interest to justify the existence of a fast track. I know everyone complains about the patent office being slow. The backlog in some art units mean that it can take 3 years for the first office action to be issued. In my experience, a pending application isn't such a bad thing and can be useful. For example, cases may cause changes in the law, for better or worse. At over 4k a pop I believe there will need to be a compelling reason to consider taking the fast track at least at first. I also wait until the quality of the examination in the fast track becomes apparent. If the examination is handled extremely well, perhaps with a lot of time allowed for meaningful interaction between attorney and examiner - which is how it used to be without paying an extra 4k! - then the PTO should easily meet the quota. If that's how it works out then I would consider it as a viable option under certain circumstances. After a thorough and favorable prior art search of course.
As for the Bilski matter... well this case has become special to me. The inventor is such a great guy, extremely intelligent and has suffered as his patent application has been pending for over 6 years now. I can't say it's entirely the fault of the patent office. I'm either the 3rd or 4th attorney to handle this case, I can't remember. I do remember that the last attorney did some things with the case that I wouldn't and I got the case just a few weeks before the end of the 6 month term. So I cleaned that up and argued against a bilski 101 rejection. The examiner subsequently dropped it, so I guess I won on that point but I knew we'd get a final because I basically rewrote the claims. It seemed like the examiner still wasn't getting it so I arranged for an interview which went really well and we subsequently worked out an allowable claim with just a minor amendment that didn't really change the scope. Now we're just waiting for that notice of allowance. I'll have to pull up the number for you. Ok, here it is. 10/917,717 - check out the amendment filed in August and the applicant's remarks - the 10 page one - to see the bilski argument.
Give me a buzz or contact me if you'd like to discuss.
Rich is referring to me. I sent him an email last night about this thread.Quote: RichN
speak of the devil, and he will appear...
Since he's my lawyer for my Poker For Roulette idea, I asked him what it meant to me. His response contained most of the same stuff as in his post above.