US Priority Review of Track ONE Album (V) - Key Steps and Notes after Track One Priority Review

Maintaining special status and ensuring continued fast processing in the Track One program is the dream of every patent applicant. However, it is crucial to understand and apply the specific rules and procedural details involved in this process to avoid unnecessary rejections or time delays. Small processing errors can lead to the removal of status or requests, so applicants need to ensure the integrity and compliance of their documents.

If an invention patent application is granted special status under the Track One program, will it always retain that status?

• The special status provided by the Track One program will be maintained until one of the following occurs:
  • The applicant requested an extension in his reply
  • The applicant filed an amended application to include more than 4 independent claims, 30 total claims, or multiple dependent claims
  • The applicant submitted an RCE
  • Applicant files notice of appeal
  • Applicant files a request for suspension
  • USPTO issues a notice of allowance
  • USPTO issues final examination opinion (Final OA)
  • Application abandoned
  • Review has been completed as defined in 37 CFR 41.102

What is the average time it takes to get a patent application granted under Track One priority examination?

• The USPTO’s goal is to receive final examination results for utility patent applications within an average of 12 months from the time Track One requests are granted.

For example, if an invention patent application and Track One request are submitted through the patent electronic system, but one item is accidentally omitted, can the missing item be submitted later through subsequent procedures and still participate in Track One?

• Yes, provided that the utility patent application and the request for prioritized examination are filed on the same day to ensure that all necessary elements are in fact “existing at the time of filing” as required by 37 CFR 1.102(e)(1).
• For example, if the application fee is accidentally omitted when the application is submitted through the Patent Electronic System, the fee can be paid directly through a subsequent submission on the same day the application is submitted. Applicants are reminded that only registered users of the Patent Electronic System can submit subsequent documents through the system; subsequent documents are documents submitted after the initial submission of the application. Therefore, applicants need to be registered users of the Patent Electronic System in order to submit such subsequent documents on the same day the application is submitted.

If I submit an application with a Track One request and receive a pre-examination notice indicating missing items or other formal issues in the original application, will this affect the Track One request? Can the applicant request an extension to respond to the office action?

• Prioritized examination requests will be processed after the utility patent application meets all formal requirements and is ready for examination. Therefore, any pre-examination notice will delay the decision on the Track One request until the applicant has responded to the pre-examination notice in a complete and timely manner. The pre-examination notice generally specifies a deadline for response, and any delay in responding to such a notice will result in no longer being eligible for the Track One program.
• Common situations that may result in an application not being ready for examination include:
  • The application does not comply with 37 CFR 1.52 and lacks an English description.
  • Failure to pay excess claim fees in a timely manner.
• These improper or missing items will delay the decision on the request for prioritized examination but will not result in the rejection of the request.
  

If a preliminary amendment is submitted to an application that already contains a Track One request, will the amendment result in the rejection of the Track One request? If the voluntary amendment request is approved, will the special status under prioritized examination be terminated?

• If the applicant submits a request for prioritized examination and a voluntary amendment at the same time when submitting the application, as long as the amendment does not cause the application to have more than 4 independent claims and the total number of claims does not exceed 30 claims or multiple dependent claims, then the voluntary amendment will not lead to the rejection of the Track ONE request or the termination of the Track ONE procedure.

If I submit an Information Disclosure Statement (IDS) with an application that includes a Track One request, will that cause the Track One request to be denied?

• No. Submitting an Information Disclosure Statement (IDS) with an application will not result in the rejection of a Track ONE request or termination of Priority Examination.

I submitted a Track One request at the same time as my invention patent application, and subsequently received an office action or pre-examination notice, but the applicant was unable to respond before the deadline. If I file a request for an extension of the deadline or a request for suspension, will it affect my Track One request or status?

• Yes. Any request for an extension or stay of a Track One request that has not yet been decided will result in a denial of the Track One request.
• For approved Track One requests, any such request will effectively terminate the Track One state. Even if the Track One state is terminated, such requests will still be processed as specified in MPEP 708.02(b)(II).

If a Track ONE priority examination request is rejected and the applicant believes that the rejection is inappropriate, can he/she file an administrative appeal?

• If an applicant believes that a rejection decision for a request for prioritized examination was inappropriate, they may file a request for reconsideration pursuant to 37 CFR 1.181. Before filing a request under 37 CFR 1.181, it is important to review the specific rejection reasons provided in the decision to consider whether the rejection may have been erroneous.

My Track ONE priority review request was rejected. Can I request a refund?

• If a prioritized examination fee has been paid, the USPTO will automatically refund the fee upon denial of the prioritized examination request pursuant to 37 CFR 1.17(c); the applicant does not need to submit a separate request for a refund.
• The prioritized examination processing fee pursuant to 37 CFR 1.17(i)(1) will be retained to cover the costs of processing the request. If the publication fee is not zero and the application is not published pursuant to 35 USC 122(b), the applicant may request a refund of the publication fee pursuant to MPEP 1126.
• For a Track One request filed with an original application that was rejected, the applicant may also file a request for a refund of the search fee and any excess claims fees before the application is examined by filing a request for abandonment. The basic filing fee, examination fee, and any required substantive fees are not refundable when abandonment is requested. However, the USPTO may consider refunding the search fee and/or excess claims fees if the request for refund is filed concurrently with or within two months of the filing date of the application declaring abandonment.