Faster examination and grant of US Patent : Track One Prioritized Examination at the USPTO

Faster examination and grant of US Patent : Track One Prioritized Examination at the USPTO

Objective:
This guide is designed for inventors and applicants who wish to expedite the examination and grant of their patent applications through the Track One Prioritized Examination process at the United States Patent and Trademark Office (USPTO). By opting for this process, applicants can significantly reduce the time to patent issuance, potentially achieving a final disposition well within 12 months of filing.

1. Understanding Track One Prioritized Examination

What is Track One Prioritized Examination?
Track One Prioritized Examination is a fast-track option offered by the USPTO that allows applicants to accelerate the examination process of their patent applications. The goal is to provide a final disposition (which could be a Notice of Allowance, a final rejection, or abandonment) within 12 months from the filing date.

Eligibility:

  • Available for original nonprovisional utility and plant applications.
  • Can also be requested for applications in which a Request for Continued Examination (RCE) has been filed.
  • Not applicable for design patents, reissue applications, or reexamination proceedings.
  • Applications must contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims.

2. Fee Structure and Costs

The fees for Track One Prioritized Examination vary depending on the size of the entity (Large Entity, Small Entity, or Micro Entity). Below is a table outlining the relevant fees:

Table 1: Track One Prioritized Examination Fees

Fee DescriptionFee CodeLarge EntitySmall EntityMicro Entity
Track One Prioritized Examination Fee1817/2817/3817$4,200.00$1,680.00$840.00
Processing Fee1830/2830/3830$140.00$70.00$35.00
Publication Fee (currently waived)1504$0.00$0.00$0.00

Important Notes:

  • All fees must be paid at the time of filing the request for Track One Prioritized Examination.
  • Failure to pay the required fees will result in the denial of the prioritized examination request.

3. Filing Requirements

  1. Complete Application:
    • Ensure that the application is complete, including the specification, claims, drawings (if any), and abstract.
    • The application must be filed electronically via the Patent Electronic System (EFS-Web or Patent Center).
  2. Limit on Claims:
    • No more than four independent claims.
    • No more than 30 total claims.
    • No multiple dependent claims.
  3. Fee Payment:
    • Pay all required fees, including the Track One Prioritized Examination fees, on the filing date.

4. Processing and Timelines

USPTO Processing:

  • Once a complete application and fees are submitted, the USPTO aims to reach a final disposition within 12 months.
  • The application will be assigned to a special status and prioritized for examination over other non-prioritized applications.

Timeline Expectations:

  • The 12-month goal includes all stages of the examination process, such as responding to office actions, interviews, and amendments.

Applicant Responsibilities:

  • Ensure timely responses to any USPTO communications.
  • Maintain the eligibility criteria throughout the examination process.

By carefully following these guidelines and ensuring all requirements are met, inventors and applicants can take advantage of the USPTO’s Track One Prioritized Examination to expedite the patent process, potentially securing patent rights much faster than through the regular examination process.

Benefits of Opting for Track One Prioritized Examination

1. Accelerated Patent Examination Process:

  • Faster Patent Grant: The most significant benefit of Track One Prioritized Examination is the expedited timeline for patent examination. The USPTO aims to provide a final disposition (allowance or final rejection) within 12 months from the filing date. In contrast, the average time for a regular patent application to reach final disposition can be two to three years or more.
  • Quicker Market Entry: With a faster patent grant, the applicant can bring their product to market more quickly, secure in the knowledge that their intellectual property (IP) is protected. This can be crucial in fast-moving industries where time-to-market is a key competitive advantage.

2. Enhanced Business Value and Competitive Advantage:

  • Attracting Investors: A granted patent is often seen as a significant asset by investors. By securing patent rights faster, companies can demonstrate their commitment to innovation and their ability to protect their technology, which can make them more attractive to investors or potential partners.
  • Deterrence Against Infringers: With a patent granted sooner, the applicant has the legal right to enforce their IP earlier. This can serve as a deterrent to potential infringers and provides the patent holder with legal recourse to prevent unauthorized use of their technology.

3. Potential Cost Savings:

  • Reduced Legal and Administrative Costs: While the Track One process involves additional fees, it may result in lower overall legal and administrative costs. A quicker examination process means fewer office actions and potentially fewer rounds of attorney responses, which can reduce overall costs associated with prosecuting the patent application.
  • Avoiding the Costs of Prolonged Uncertainty: The longer it takes to obtain a patent, the longer a company must operate without knowing whether their innovation will be protected. This uncertainty can lead to delays in product launches, missed market opportunities, or the need for costly design-arounds. The faster timeline of Track One reduces this period of uncertainty.

4. Strategic Advantages:

  • Licensing Opportunities: A granted patent can open up opportunities for licensing deals, creating an additional revenue stream for the patent holder. By obtaining a patent faster, the applicant can start negotiating licensing deals sooner.
  • Stronger Negotiation Position: In negotiations with competitors or potential acquirers, having a granted patent can significantly strengthen the applicant’s position. A granted patent provides a clear, enforceable right that can be used as leverage in business deals.

Return on Investment (ROI) of Additional Investment for Track One

1. Direct Financial Benefits:

  • Revenue from Market Entry: By securing a patent faster, companies can enter the market sooner with a protected product. This can lead to earlier revenue generation. For example, if the expedited process allows a product to launch six months earlier than it would have otherwise, the additional revenue generated during that time can far exceed the cost of the Track One fees.
  • Licensing Income: With a patent granted sooner, the applicant can start earning licensing income earlier. The faster this income stream starts, the greater the cumulative financial benefit over the patent’s life.

2. Cost-Benefit Analysis:

  • Fee Investment vs. Potential Earnings: The additional fees for Track One Prioritized Examination range from $875 for a micro entity to $4,340 for a large entity (including processing fees). If this investment allows the patent holder to secure a market or licensing opportunity even a few months earlier, the financial return can be substantial. For instance, if a product generates $500,000 in revenue per month, securing a patent even three months earlier could translate to $1.5 million in additional revenue.
  • Avoided Costs of Infringement: A faster patent grant means that the applicant can enforce their IP rights sooner, potentially avoiding the costs associated with infringement that might occur if the patent is still pending. The earlier enforcement can save legal costs and prevent loss of market share to competitors.

3. Strategic ROI:

  • Valuation Increase: A granted patent can increase the overall valuation of a company, especially in industries like technology or pharmaceuticals, where IP is a critical asset. The sooner a patent is granted, the sooner it can contribute to the company’s valuation, which is beneficial in fundraising, mergers, or acquisitions.
  • Investor Confidence: Investors often prefer companies with granted patents over those with pending applications because of the certainty a granted patent provides. This confidence can lead to higher investment amounts or better terms for the company.

4. Competitive ROI:

  • Market Positioning: Being first to market with a patented product can establish a dominant position in the market, which can be difficult for competitors to challenge. The faster timeline of Track One can be the difference between being a market leader or a follower.
  • Brand Strength: A faster patent grant allows the company to promote its product as “patented” rather than “patent-pending.” This can enhance brand strength and consumer confidence, potentially leading to higher sales.

Conclusion

Opting for Track One Prioritized Examination offers significant benefits to inventors and companies by accelerating the patent grant process. While it involves additional upfront costs, the return on investment can be substantial through faster market entry, enhanced business value, and the ability to capitalize on strategic advantages. For many applicants, especially those in competitive or fast-moving industries, the benefits of quicker patent issuance outweigh the additional costs, making Track One a valuable option in the patent prosecution strategy.

Prasad Karhad
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