A Track I to PTA delay, delay, delay

Todd Martin

For many of us, a Track I case means quick, efficient examination with a prosecution resolution in less than a year, with a patent grant potentially within 3 to 6 months.  Like business class travel, if you want the special service, you typically have to pay for it.  For Track I, those fees are presently $4,200 (large entity), or $1,680 (small entity). 

By way of background, the U.S. Patent & Trademark Office (“USPTO”) implemented prioritized examination (“Track I”) in September 2011 as an enhanced examination timing control procedure under the America Invents Act (“AIA”).[i]  According to MPEP § 708.02(b), “[t]he goal for handling applications under prioritized examination is to provide, on average, a final disposition within twelve months of prioritized status being granted.”[ii]  The Track I procedure is especially of interest for innovators desiring patent protection quickly in order to protect (or enforce) any IP rights.  The Track I procedure is particularly used by patent owners having a pending continuation application where one or more patents in a patent chain is being enforced in a litigation.

At the other end of the spectrum, for situations where there has been delay by the USPTO, a patent applicant is not unduly prejudiced by such delay since the law provides for patent term extensions (“PTA”) for any delay by the USPTO, less any delay by an applicant.  There are three main grounds for PTA:  “A” delays for USPTO promptness in typical prosecution actions (“A-delays”); “B” delays for pendency beyond a 3-year period (“B-delays”); and “C” delays for delays caused by successful PTAB appeals (“C-delays”).[iii]  The various and particular grounds of USPTO and applicant delay are set forth in MPEP §2730 et seq.[iv]  B-delays are relatively rare since most applicants eventually file a Request for Continued Examination (“RCE”) to progress a case at least at some point within the first three years of application pendency.  Also, the usual cause of an application pending beyond three years, pendency before the Patent Trial and Appeal Board (“PTAB”), does not factor in the calculations for B-delays.[v] The PTA process is of particular interest to the pharmaceutical industry since the life of a patent can involve significant amounts of money.

This writer’s experience has been mostly positive with the Track I process, except for one occasion where a Track I grant eventually resulted in not only a 3-year, B-delay PTA case, but a patent grant where all three PTA categories played a role in the final PTA outcome.  To this writer’s knowledge, no Track I application has ever resulted in a triple PTA delay outcome; however, it is clearly possible as demonstrated below.

The writer filed a patent application for a “Mobile Intelligent Injury Minimization System and Method”, which overall, involves the application of artificial intelligence (“AI”) for mobile situations.  The application was filed under the Track I procedure.

As often happens in the patent profession, Applicants’ representatives and the examiner did not come to an agreement on allowable subject matter.  Applicants filed an appeal.  After submission of the Appeal Brief, the examiner issued a non-final office action, leading to the exit from the appeal process.  Further disagreements ensued, which eventually made it to the PTAB, which ruled in favor of applicants on all grounds.  As a reminder, time before the PTAB is excluded from the calculations for the 3-year provision of B-delays.[vi]

Having received the good news of a complete reversal of the examiner by the PTAB, Applicants expectantly awaited the Notice of Allowance.  It was nearly 3 months before the Notice of Allowance was received though.  Applicants paid the issue fee within days of receipt of the Notice of Allowance.  Then another unusual event occurred. 

It is quite normal in practice that a U.S. patent will issue within three weeks of payment of the issue fee.  Based on the writer’s experience the past year, this appears to remain true despite implementation of e-grants (where the Office no longer prints and mails a paper copy of the patent).  Sometimes issuance is delayed by submission of a Rule §312 Amendment, but under ordinary circumstances, a patent issues within three weeks of an issue fee payment.

In the present case, it took more than four months for the patent to issue after payment of the issue fee (with no involvement/delay from Applicant side).  The application eventually issued as a patent in April 2024.[vii]  The delayed issuance is yet another grounds of PTA (category A-delay), and a rare A-delay ground.[viii]  In fact, the writer is unaware of this particular category A-delay ground for PTA being applied in any cases.[ix]

There are several lessons to be learned from this experience.  Firstly, Track I does not always lead to a quick resolution (patent grant, or “give up”), but can involve delay, delay, and more delay, depending on the circumstances operating “behind the curtain” at the USPTO.  Secondly, with a little bit of faith and perseverance, you do have a prayer of reaching the end of the process with a successful outcome.

Advisement

No part of this article was authored by Artificial Intelligence (“AI”); it is entirely original.