The IP Manager’s Playbook: Leveraging the Tools of the USPTO, Part II – Track One – When There is a Need for Speed

Posted on 05/02/2017 by William Reid, in Articles, IP Manager's Playbook, Patent Resources

This is the second article in a series related to programs initiated by the Patent Office to assist patent practitioners; for part one in this series, Awaiting the Return of P3, Click Here.  This article discusses the Track One program.  Track One is one of three programs directed to expediting the front end of patent prosecution.  Besides Track One, the other programs include the patent prosecution highway and Accelerated Examination.  The value of these programs is evident when one considers that total prosecution time is dominated by the time waiting to receive an Office Action.  In fact, this time amounts to over 60% of the total prosecution time.  So, any effort to reduce overall patent prosecution time must affect the time awaiting the first office action.  Track One addresses this.  The saved time translates to earlier issue dates, which can aid the client in terms of licensing opportunities, or in blocking the patent applications of the client’s competitors, and potentially reduce prosecution costs.

Each of these programs to speed prosecution involve a form of quid-pro-quo, where expedited handling is provided in exchange for agreeing to a more limited number of claims and to work within a framework from a timing standpoint.  For the Track One Program, in exchange for a fee and limiting the claims to a certain number, the Applicant can expect to receive a first office action in a handful of months, and a final disposition in about a year.

Track One Statistics through March 2017 are shown in Table 1.  With respect to pendency, Track Once provides a 12.1-month reduction in the time waiting for an Office Action, and a 17.8-month reduction in the total pendency time.

Table 1.

  Track One (months) Overall (months)
Pendency from Filing to Petition Grant 1.4  N/A
Pendency from Petition Grant to First Office Action 2.6  N/A
Pendency from Petition Grant to Final Disposition 6.5  N/A
Pendency from Petition Grant to Allowance 5.2  N/A
Pendency from Filing to First Office Action 4.0 16.1
Pendency from Filing to Final Disposition 7.9 25.7

In terms of a reduction in prosecution costs related to the number Office Action Responses, although definitive analysis in this area is not readily available, I have seen some analysis that Track One decreases responses to Office Actions by about 1.2, relative to conventional prosecution.  Assuming this is the case, at an average cost of $4000 for responding to an Office Action, the savings would be about $4800/case.  This of course more than pays for the cost of its fee.

The Requirements of a Track One Request include: a Petition (AIA/424); Applicant is limited to no more than 30 total claims with 4 independent; and a fee of $4000 for a large entity, $2000 for a small, and $1000 for a micro.  There are no additional examination-related support documents required.

When would you consider Track One?  Track One is a great fit to speed prosecution to absolutely minimize pendency, if you’re willing to comply with compact prosecution, the fee, and the limited number of claims.  There are many applications where you can see this would find value.  For example, if there were potential infringers in the marketplace, a quick allowance would be desirable.  Also, periodically for business reasons acquiring issued patents quickly can have value; for example, a Research department might want to gain recognition for its arduous work in an area, or the Business itself may desire to attract new investors.  Also, Track One does not require connectivity to a related application as with the Patent Prosecution Highway (PPH), and can be used in conjunction with it.  For example, assuming U.S. application is first filed using Track One.  Upon allowance, that positive work product can be used as a basis for the patent prosecution highway in countries party to the PPH-related agreements.

 

– William Reid


This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.