Track One Prioritized Examination for Utility Patents

Posted Thursday, September 18, 2014.

The United States Patent and Trademark Office (the “USPTO” or “patent office”) was reporting a “total pendency” for applications for patents of 27.5 months as of August, 2014. In other words, from the time that a patent application is filed to the time that a patent is issued, an applicant can expect to wait two years and four months.

In recent years, applicants have had to wait three to four years following filing of the application for a patent to be issued. The patent office is obviously making good progress on reducing its backlog of unexamined applications resulting in a corresponding reduction in total pendency. Still, many applicants may not be able to wait for two to three years before a patent actually issues. For example, there could be a competitive situation brewing, in which actually having the patent will lead to an advantage over a competitor by virtue of being able to bar such a competitor from making or selling copies of the applicant’s product.

A variety of programs exist at the patent office for “accelerating” examination of a patent application. Under such accelerated programs, the patent application is usually put at the front of the line. Once it is assigned to a particular examiner, the accelerated application is ordinarily the first application which the examiner will handle after finishing whatever application the examiner is currently processing.

One such program is called Track One prioritized examination. In short, by paying a surcharge to the patent office above and beyond the regular filing fees, the application can be designated for accelerated examination such that the applicant can expect either a patent or a final rejection no later than 12 months after filing.

Some other requirements for entry of the Track One program are that the application may have no more than four independent claims and 30 total claims. In addition, the patent office will examine no more than 10,000 Track One applications each fiscal year. So far, the limit has not been reached – the largest number of Track One applications filed in a single fiscal year to date was 6,872 in FY2013.

While the goal is to have either a patent or final rejection no later than 12 months after filing, in actuality the patent office is doing much better than that. As of August of 2014, Track One cases were completed in an average of 6.3 months. That is consistent with my own experience with the Track One program. The most recent Track One application I filed on behalf of a client issued as a patent in 6 months and 7 days.

The surcharge for Track One is about three times the total amount of the other application fees. The Track One fee is discountable for small entities and micro entities, as most USPTO fees are. For example, a USPTO small entity filing fee (assuming 20 claims) would be $730 and the USPTO Track One surcharge would be $2070. (Those figures are as of today and are subject to change.) Micro entity clients could expect those fees to be about half that much.

To be able to start the patent monopoly nearly two years sooner for only a couple thousand dollars could lead to a significant competitive advantage. Also, remember that the patent term begins 20 years from filing, generally irrespective of how long the application is pending. In other words, if it takes three years for the application to be prosecuted, the effective term of the patent will be 17 years. With a Track One application, should the application issue as a patent six months after filing, the effective patent term becomes 19.5 years.

One very important thing to remember is that Track One status must be requested at the time the application is filed. The patent office will not grant a request to confer Track One status on an application after it has been filed (unless it is in the context of an RCE). If the application is filed and then the following week it comes to light that Track One examination would be best, the only option is to file a second application, file a Track One request concurrent with that second application, and pay all the patent office fees including a second set of filing, search, and examination fees.

In my view, for applicants who are bringing their product to market and are concerned about their competitive position, Track One is a bargain and should always be considered.

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