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