United States: Expediting Prosecution: Comparing Track 1 Prioritized Examination, Accelerated Examination, The Patent Prosecution Highway, And Petitions To Make Special Based On Age

The USPTO's new Track 1 Prioritized Examination program allows an applicant to reach final disposition (allowance, final rejection, abandonment) within 12 months of filing. To qualify for this program, an applicant must file a simple, one-page petition and a $4800 petition fee ($2400 for small entities). According to the USPTO's Track 1 website, the current pendency to final disposition is just over 5 months.¹ But how does Track 1 compare to the USPTO's other programs for expediting examination?

Right now, the USPTO offers three other programs for expediting examination of utility applications: Accelerated Examination (AE), the Patent Prosecution Highway (PPH), and Petitions to Make Special based on an applicant's age or health. Like Track 1, AE's goal is to reach final disposition within 12 months of filing. Unlike Track 1, an applicant pays only a nominal petitions fee, but must conduct a search and submit an accelerated examination support document characterizing the search results. The PPH, in contrast, does not require a fee or a support document; rather, the applicant files a PPH request based on an allowance or favorable search report from a corresponding foreign or PCT application (if necessary, the U.S. claims must be amended to "sufficiently correspond" to the allowable foreign claims.) According to the USPTO, examination of a PPH case should begin about 2–3 months after the PPH request is granted.² And unlike the Track 1 and AE petitions, which must be filed with the application, a PPH request can be filed any time before examination begins. Petitions to Make Special based on an applicant's age or health are free, but apply only to those applicants older than 65 or in very poor health.

Which of these programs is the best? To answer that question, we reviewed approximately 350 applications filed in these programs since 2006 (the Track 1 applications date only from that program's institution on September 26, 2011.) We then determined the average and median times from effective filing date to date of allowance for the allowed applications in our sample, plus the standard deviation in these times:

Days from Effective Filing Date to Allowance

We found that the Track 1 applications were allowed on average 184 days after the application's effective filing date, compared to 317 days for AE, 565 days for the PPH, and 806 days for applications made special based on an applicant's age.³ For reference, the average application pendency across non-expedited applications in 2011 was about 1240 days (1022 days when counting RCEs as new filings).⁴ The data were clear: for the allowed applications in our sample, Track 1 was the fastest.

But that is not the whole story. Despite its relatively high up-front cost, Track 1 applications may also be the least expensive to prosecute, especially for small entities. To estimate prosecution costs, we tabulated the mean number of office actions for the allowed applications in our sample. Multiplying the mean number of office actions by an estimated cost to the applicant for preparing and filing a response and adding the extra petition costs, if any, yields an "expectation cost" for each program. We did not account for RCE costs because there were less than 3 office actions, on average, per application in each program.

We found that, on average, there were only 1.2 office actions to allowance for the Track 1 applications, 1.3 office actions for PPH applications, 1.7 office actions for AE applications, and 2.2 office actions for applications made special based on an applicant's age. (For reference, the USPTO averages about 2.7 office actions per final disposal for other cases.⁵) If the cost of responding to an office action is about $2600 per recent AIPLA data,⁶ then the expectation cost of filing and prosecuting a Track 1 application at large entity rates is $7920 (i.e., 1.2 × 2600 + 4800). In contrast, the expectation cost of filing and prosecuting an AE application is about $4420 plus the cost of conducting the pre-examination search and preparing the AE support document. If the cost of conducting the search and preparing the support document exceeds $3500, then filing and prosecuting a Track 1 application should, on average, cost less than filing and prosecuting an AE application.

In fact, the benefit of Track 1 for small entities may be even greater. At small entity rates, the expectation cost of filing and prosecuting a Track 1 application is only $5520. This means that Track 1 should be less expensive, on average, than AE if the cost of the search and the support documents (which does not change with entity size) is more than $1100 (the difference between the $5520 Track 1 expectation cost for small entities and the $4420 expectation cost for prosecuting an AE application). According to the AIPLA 2011 Economic Survey, a novelty search is about $2000, which suggests that Track 1 may be less expensive on average than AE for small entities.

For small entities, a Track 1 application has a good chance of being cheaper to prosecute than a regular application. Assuming 2.7 office actions on the normal track at a cost to the applicant of $2600 per office action, the expectation cost of prosecuting a normal application is $7020. Conversely, the expectation cost of prosecuting a Track 1 application for a small entity is only $5520—including the Track 1 petition fee. Of course, the applicant should expect to incur all of the costs for a Track 1 application within 12 months (or less) instead of over 2–3 years (or more) as would be the case with a normal application.

In sum, Track 1 examination appears to be significantly faster on average than the USPTO's other programs for expediting examination. Surprisingly, prosecuting a Track 1 application may cost less than prosecuting an AE application even accounting for the large fee for participating in the Track 1 program.

Originally published in Patently-O, December 27, 2012

Footnotes

* The authors are attorneys at Foley & Lardner LLP. This article reflects the views of the authors and not necessarily the views of Foley & Lardner LLP or its clients.

1. http://www.uspto.gov/patents/init_events/Track_One.jsp

2. http://www.uspto.gov/patents/init_events/pph/pphbrochure.pdf

3. For comparison purposes, current Director Kappos recently quoted an average of 153 days to "final disposition" for Track 1 cases, with an allowance rate of about 50%. The term "final disposition", of course, includes a variety of actions other than the allowances in our study.

4. http://www.patentlyo.com/patent/2012/03/total-patent-application-pendency.html

5. http://www.uspto.gov/ip/global/patents/PPH_slides_for_WS_RT_(2).ppt

6. The AIPLA 2011 Economic Survey gives response costs, in 2010, of $3000 for relatively complex electrical, computer, biotech and chemical cases; $2500 for relatively complex mechanical cases; and $1850 for minimally complex cases.

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