MVS Filewrapper – Blog:Ways to Accelerate Patent Examination Before the USPTO – Part 2November 7, 2014

As discussed in a first posting earlier this week, there are a few options to patent applicants to combat the long pendency, slow processing and delays in examination before the United States Patent and Trademark Office (USPTO). The First Action Interview (FAI) Pilot Program was discussed as one option to expedite the pace of patent examination once an application reaches a patent examiner.

The various options and programs that be outlined in this series of blog posts include the following: (1) the First Action Interview Pilot Program (discussed earlier this week); (2) Track One Prioritized Examination; (3) Accelerated Examination; (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.

Today, the Track One Prioritized Examination (Track One PE) is discussed.

The Track One PE is a true form of "fast tracking" an application from start to finish and provides a patent application with "special status" to ensure that a final disposition is achieved within 12 months of filing the application. As mentioned earlier, a final disposition refers to the issuance of a Notice of Allowance, the patent applicant filing of a Request for Continued Examination, or abandonment of the application. The USPTO will grant up to 10,000 Track One PE per year (which has not yet been reached in any single year). As of October 9, 2014 USPTO data shows that over 9000 Track One PE requests have been filed for FY2014 along. Theoverall pendency data for the program from 2011 through 2014 shows that "fast tracking" is indeed happening, with an average pendency to a First Office Action being only 2.4 months from the grant of the Track One PE request and a final disposition occurring within an average of 6 months.

Qualifications for the Track One PE include: filing a request to utilize the program with an initial patent filing (or when filing a Request for Continued Examination); including all signature documents with the initial filing; and payment of the government fee for the prioritized examination (large entity / undiscounted $4,000; small entity $2,000; micro entity $1,000). An application cannot contain more than 4 independent claims and 30 total claims to use Track One PE. There are also time limits for responding to Office Actions (3 months without using extensions of time). Further detail of the requirements for the Track One PE program is available at theUSPTO website.

Despite the significant filing fee to enter the Track One PE, many have touted the benefits of the program as cost-effective due to the expedited examination (and often elimination of unnecessary rounds of examination and/or filings of Requests for Continued Examination). Theexamination statistics show an overall allowance rate of 59% (based on number of allowances of total final dispositions under Track One PE), indicating that over half of the applications are allowed within the 12 month period.

Patent applicants in need of promptly examined and issued patents may find significant value in the Track One PE program. However, the decision to utilize the Track One PE program (or the previously discussed FAI program) for a patent application should be discussed with your patent attorney.