Speed up the patent process with the new "Track One" Prioritized Examination Program
On average, patent applications spend 3-5 years pending at the United States Patent and Trademark Office (USPTO), mostly as a result of its slow turnaround time. For example, the USPTO can take more than a year to initially pick up an application and many months to over a year for responding to applicants’ many Office Action responses. Because time is of the essence for IP protection, such delays could be crucial.
For example, because technology moves so quickly, a patent granted earlier is much more advantageous to protect a company compared to later when the technology may be long obsolete. In another example, in the startup world, receiving one or more issued patents may go a long way toward the valuation of a company when VCs consider funding or a potential buyer considers an acquisition price.
Fortunately, applicants may now turn to the Track One Prioritized Examination program, in which the USPTO will prioritize the handling of a patent application with the goal of arriving at a final disposition within 12 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.” It should be noted that a final disposition does not mean that the patent application cannot be pursued further- it means the patent application has reached either allowance, abandonment, or a final rejection. Further prosecution can be pursued through an appeal or a request for continued examination (RCE).
Various accelerated examination options have been and continue to be offered, but now Track One examination is more available and in many instances a superior option to both regular examination and other accelerated examination options. Applicants must pay more for this prioritized examination option, but from a business strategy perspective, the cost may be well worth reaching final disposition earlier. For instance, the Track One cost may be negligible compared to the total cost necessary to acquire a patent, and especially compared to the strategic cost of acquiring a patent at a later date.
Today marks the two-year anniversary of the Track One program. Applications filed under the program had about a 96% allowance rate in 2011, about a 93% allowance rate in 2012, and at the time of this writing, on trajectory for about a 94% allowance rate in 2013 (see the USPTO Track One page for more details). These allowance rates are significantly higher than regular examination allowance rates.
What this means for applicants: While it’s a business decision, one strategy is to file only those key and/or time-sensitive applications through the prioritized examination program. Another approach is to file applications directed to narrower subject matter and then pursue broader subject matter after granting of the prioritized application.
To qualify for the program, applicants must satisfy certain requirements, some of which include:
- The application must be filed with a request for prioritized examination.
- The application must be filed using the USPTO's electronic filing system.
- The application must be “complete” upon filing (e.g., all filing fees included).
- The application must not contain more than 4 independent claims and 30 total claims.
- Applicants must not file a petition for extension of time to extend the time period for filing a reply to an Office action, otherwise the prioritized examination status of the application will be terminated.
- A $4,000 fee must be paid in addition to the normal filing fees. The fee is reduced to $2,000 for applicants claiming small entity status and $1,000 for applicants claiming micro entity status.
See the USPTO Track One page for more information. It should be noted that other countries also have accelerated examination programs, albeit with their own characteristics.