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Track One Prioritized Patent Examination—Cut to the Front of the Line


By
Smith & Hopen PA

Under a typical examination by the United States Patent and Trademark Office (USPTO), the process of receiving an issued patent can take several years. For example, the average time before receiving a first office action (communication on the merits of application) is about 18 months. Moreover, the average time to reach a final disposition—an allowance or a final rejection—for a patent application is about 29 months.

For some inventors, the wait may be beneficial—the inventor can use the time to secure investment or generate revenue needed to commercialize the invention. For others, waiting 18 months before hearing back from the USPTO may be undesired or even detrimental to the success of the product. Generally, an applicant who is ready to enter the marketplace with an invention will want to receive a patent quickly, getting a leg up on the competition.

Under the America Invents Act (AIA), the USPTO now allows up to 10,000 applications per year to be given a prioritized examination under the Track One program. While the up-front fee for a Track One filing ranges from $1,000 for a micro-entity to $4,000 for a large entity, the program offers many benefits for applicants.

Prioritized Examination

As its name suggests, the main benefit to filing a Track One application is prioritized examination. The goal of the Track One program is to reach a final disposition within 12 months of filing. The USPTO currently has a lengthy backlog, and it is not uncommon for patent applications to pend for almost two years until the examination even begins. Under the Track One program, an applicant can pay a government fee to “skip” to the front of the line. Track One applicants can expect the USPTO to issue its first communication within 3-6 months, and a final disposition within 8-12 months of filing, which is significantly less than the average 29-month pendency period under the regular examination.

Longer Enforcement Time

Since the life of a utility patent is 20 years from the application filing date, under regular examination, the first few years of the patent term will typically be spent on prosecution of the patent application—during which time a patent applicant has no legal recourse against potential infringers. On the other hand, under prioritized examination, it is possible to secure patent protection within twelve months from the filing date, thus significantly extending the term during which a patent can be enforced.

Quickly Enter the Marketplace

Some applicants may be wary of selling products until they receive an issued patent. Due to the relatively short pendency of a Track One application, such an applicant can enter the marketplace sooner and with a peace of mind that the technology is legally protected against unauthorized infringement.  

Foreign Filing through Patent Prosecution Highway

Finally, Track One applicants may be able to utilize another program—the Patent Prosecution Highway (PPH)—to streamline prosecution of the patent application in foreign countries. Under the PPH, a patent applicant who has received a notice of allowance domestically qualifies for expedited examination in foreign jurisdictions. Thus, a Track One applicant who secures a quick allowance in the U.S. can use that allowance to expedite patent examination abroad. Win-win.

Conclusion

The Track One prioritized examination program provides many benefits for patent applicants, and may be well worth the up-front government fee.




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