The patent process is often complex, ripe with pitfalls, and is generally known to take a long period of time from the initial filing till issuance is finally received. In the US, a utility patent application takes approximately three years till issuance and sometimes longer. However, the United States Patent and Trademark Office (USPTO) offers a variety of prioritized programs and some other options for expediting the application. Currently, one of the most well known is the Track One Patent Examination.
Track One Prioritized Examination is currently a pilot program yet one of the most popular routes for expediting a patent application. Application through track one is made as a “request” at the time of filing a utility or plant application and thrives to obtain a final disposition within twelve months. Continuation and RCE applications are also eligible for the program. To date of 2018, the pendency from petition grant to the first office action has been under two months on average; the pendency from the petition grant to final disposition (i.e., final rejection, notice of abandonment, or notice of allowance) has been under seven months. The current filing fees are $4,000, $2,000, or $1,000 respectively for large, small, or micro entity, in addition to a processing fee and the underlying normal application fees (see chart below). The USPTO claims that only a maximum of 10,000 requests will be granted per fiscal year. Track One is also limited to four independent claims and thirty dependent claims. Interestingly, 2016 data shows that Track One applications received a higher allowance rate than non-Track One applications (84.9% vs. 69.2%).
Caveat emperor, Track One is not for the faint of heart as the applicant must keep up with the fast pace otherwise Track One is terminated. For example, prioritized examination under Track One is terminated if 1) the applicant files a request for an extension of time to anything; 2) once a “final” office action is sent by the USPTO; 3) applicant requests an RCE; 4) applicant files an appeal; or 5) applicant amends the application to have in excess of 4 independent claims and 30 dependent claims. Additionally, Track One is not an option for a US national phase entry (applications originally filed in foreign country and later entering the US national phase with priority to the foreign filed application) or for reissue applications, original design applications, provisional applications, or reexamination proceedings. But as noted above, Track One requests can be made along with continuation applications and RCE applications.
Interestingly, there is a limitation on the number of Track One petitions granted by the USPTO in any fiscal year, which is only 10,000. This number can be tracked on the USPTO’s dashboard for Track One examination statistics. Other requirements are as follows:
USPTO Fees for Track One Examination and Utility Patent Application as of August 2019
|Description of Fee||Micro Entity*||Small Entity||Large Entity|
|Utility Patent Application||$430||$785||$1,720|
|Petition for Prioritized Examination||$1,000||$2,000||$4,000|
|Total Fee (assuming no excess claim fees)||$1,465||$2,855||$5,860|
*See qualification for Micro Entity status here: https://www.uspto.gov/patent/laws-and-regulations/micro-entity-status-gross-income-limit
There are some other approaches that can be taken in order to speed up the examination process, such as Accelerated Examination, Patent Prosecution Highway (PPH), and even Expedited Examination for Design patent applications. The differences of these can be reviewed at the USPTO’s Patent Application Initiatives page. There are also some other informal ways such as simply contacting the examiner for a status request. Examiners are often inundated with patent applications. Requesting a status update can help prompt the examiner to review an application that they may have gotten to later.
Similarly, requests for interviews after receiving an office action can help the examiner if there are issues of ambiguity on either side. There is no fee for requesting an interview and are typically guaranteed after a non-final office action although at the discretion of the examiner after a final office action. Talking through the office action together with the examiner, if done correctly, can help streamline the issues to get closer to a notice of allowance.