Track 1 Prioritized Exam: Potentially Worth the Upfront Investment

By Condo Roccia Koptiw LLP // January 11th, 2012

With the passage of the Leahy-Smith America Invents Act (AIA) in September 2011, the USPTO was expressly authorized by Congress to continue the expansion of the Track 1 Prioritized Patent Examination Program. Originally announced in the February 2011, the Track 1 program was formerly a USPTO pilot program designed to help applicants avoid the substantial delay in examination caused by a backlog of nearly 700,000 non-provisional patent applications. The AIA proscribed new fees for the program ($4,800 for large entities; $2,400 for small entities), and the USPTO began accepting applications for AIA authorized Track 1 exam on September 26, 2011.

Thus far the results of the Track 1 program appear to be extremely encouraging for potential applicants. According to newly released data from the USPTO, 98.9% of the 1,694 Track 1 petitions received by the Office have been approved, taking an average of 40.8 days to process the application and make a determination on the petition. Petitions requesting prioritized exam must accompany the as-filed application (including continuations) or be included with a Request for Continued Examination (RCE). There are also limits on the number of claims, allowing for a maximum of four independent claims and no more than 30 total claims. The stated goal of the program is for final disposition (e.g., a notice of allowance or a final rejection) of the prioritized application within one year from the filing date, which is a great improvement over the average wait of between three to five years for most applications.

The preliminary data regarding the program does seem to indicate that program is substantially accelerating the examination process. Of the 1,218 Track 1 petitions approved since the passage of the AIA, over half (648) have already received a first office action. On average, it is taking about a month (30.7 days) from the time the petition is granted until the first action is issued, meaning that a first office action could be received in a little over two months after the filing date. Thus far there have been 23 patents granted through the program, with the fastest taking only 37 days from filing.

The Track 1 program may be an important tool for applicants looking to receive faster allowances for their most important cases. Although the $4,800 fee (which is in addition to filing/search/examination fees) may make the program a little too pricey for lower priority applications, the Track 1 program should definitely be considered for more foundational innovations that could have greater value in the marketplace. It may also be appealing if an applicant is planning to release a new product in the near term and wishes to have some patent protection prior to its release. Additionally, the Track 1 program does not include the onerous requirement that the applicant file independent search and examination support documents as was required in the original accelerated examination program accomplished via a petition to make special under 37 CFR 1.102. These requirements resulted in tremendous amounts of prosecution history, which caused many to shy away from the accelerated examination program out of fear of the applicant’s statements being used against them in a later litigation.

Overall, the Track 1 program appears to be meeting or exceeding the stated goals of the USPTO, making it an appealing avenue for the prosecution of your highest priority cases. If you have questions regarding the Track 1 program or are interested in pursuing a prioritized patent application, feel free to contact the author or any attorney at Condo Roccia Koptiw LLP.

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