- The USPTO’s “Track 1” prioritized examination program can cut the wait for a first office action from about 16.3 months down to roughly 3.4 months.
- Track 1 aims for a final disposal (allowance, rejection, or abandonment) within 12 months, versus a standard pendency the article puts at 26.1 months to allowance.
- The Track 1 fee is $2,000 for a small business (under 500 employees) and $1,000 for micro-entities, and the PTO has simplified the paperwork needed to qualify.
- The Track 1 request and fee must be filed on the same day as the rest of the patent application — it cannot be added the next day.
- Track 1 is best suited to protecting key technologies with a short product half-life, where delays in examination can cause a business to miss its monetization window.
In the security line at the airport, the first class lane moves very fast. In the Patent Office, the first class lane is called “Track 1.”
I believe a meaningful metric that correlates with the health of the U.S. economy is the backlog of unexamined patent applications sitting idle in the US PTO. As of January 2015, the PTO has a dashboard that shows over half a million patent applications waiting to be looked at by an examiner.
Maybe Congress impossibly tied the PTO’s hands and skimmed fees for other uses. Whether or not that is the case, the PTO deserves credit for trimming 1.3 months off of the wait for a first office action while handling a record setting numbers of patent applications in the last two years. The PTO is certainly making improvements, but the current first action pendency of 16.3 months is still a long time for businesses to wait for a reply from the PTO, and 26.1 months is a very long time for innovations to work their way through the patent process. Many US businesses would certainly benefit from faster service.
FASTER SERVICE IS ALREADY HERE
A viable solution that can cut more than a year off of the time to first office action is already available, and it is (relatively) inexpensive!
Quietly, the PTO has been accepting about 750 applications every month in its “Track 1” program. When you file with Track 1, your application is “accelerated” and the “goal” is to get the patent application to a “disposal” in 12 months.
In the PTO, a disposal refers to a final decision: either abandoned, rejected twice, or allowed.
Whether abandoned by the applicant, twice rejected, or allowed, the patent examination process has reached a conclusion, and the PTO considers its examination complete. As shown in the above graphic, the PTO grants almost as many allowances under Track one as it finally rejects. (Note that, for a fee, the Applicant can request to continue the examination.)
As shown in the below graph I compiled from PTO data for January 2016, the average first office action takes 3.4 months after filing for Track 1 cases, but 16.3 months for everyone else. Under Track 1, allowances typically only take 6.5 months, compared to 26.1 months for everyone else
With numbers like those, the difference in waiting time between First Class and Coach comes to mind!
What is the Catch?
The fee to request Track 1 prioritized examination for a small business (less than 500 employees) is $2000, and only $1000 for micro-entities. The PTO dropped the previous requirements for expensive and time-consuming documents, so attorney fees are now minimized.
As you might expect, the Applicant is not supposed to drag its feet. The PTO will only keep on hurrying up as long as the Applicant does, too.
The biggest potential “gotcha” is that the Track 1 request and fee must be filed on the same day that you file the rest of your patent application. It cannot be filed the next day.
Takeaway for Business Leaders
Although little known, the Track 1 Program is a great deal for protecting key, crown jewel technologies where product half life is short, and monetization potential can be lost when the patent process takes more than a year.
Executives who manage product lines in fast moving sectors may have written off patents thinking that the patent application will sit idly unexamined for many months while the market for the product peaks and starts to fade.
Naturally, not every idea merits Track 1. But, the Track 1 program, while still available, may shorten the patent cycles dramatically enough so that patents can earn a second look.
I might add that a powerful way to maximize speed and value to maximize profits is to combine Track 1 with the 7 Step Strategic Patent Assessment that I described in my best-selling book, “Patent Offense.” When taken together, these two potent strategies can truly maximize your patent ROI.
In upcoming articles in this column, I will describe two more of my favorite programs that the Patent Office is quietly testing. We have used both of these programs successfully to accelerate the PTO cycle time and push down the patent cost curve while increasing patent enforcement value!
To your success and profits,
Craige Thompson, JD, EE, PE
“The Examiner Whisperer”
