Although there are situations where delay is valuable, often a U.S. patent applicant is not content to wait roughly 2–3 years (the current average) for the USPTO to complete examination of their application and issue the corresponding patent. That can be particularly true for startups, for the sooner the startup earns a patent, the sooner it can advertise that patent, borrow money against it, attract investors to it, craft deals based on it, license it, enforce it, etc. In other words, speeding up the patent speeds up (and likely increases) the return on investment in that patent.
Fortunately, it’s possible to file a U.S. non-provisional patent application with a request for “prioritized examination” (“PE”), also referred to as the “Track One” program. Once a request for Track One examination is filed, the USPTO will decide whether to grant that request within an average of about 2 months. When the USPTO grants a request for Track One examination, the USPTO strives to either allow or finally reject all the claims of that application within the following 12 months, though this typically occurs even sooner.
The USPTO usually sends the First Office Action about 2 months after granting the Track One request. Typically, the USPTO allows the claims of a Track One application within about 4.5 months from granting the Track One request or finally rejects all the claims within about 5.5 months. So, on average, in under 8 months, the claims of a Track One application have either been allowed (currently about 60% of the time and often without issuance of a final rejection), or finally rejected, a decision that can be appealed and potentially reversed.
Track One isn’t for everyone, especially considering the relatively large extra fee (currently about $4500 for large entities and $1800 for small entities) that must accompany the Track One request and the following additional requirements:
- The application must be complete (i.e., specification, at least one claim, and drawing (if needed));
- The number of claims in the filed application must not exceed 4 independent and 30 total;
- The application must not present any multiple dependent claims;
- All required inventor declarations or a properly completed Application Data Sheet must be filed with the application; and
- All other required fees (filing, search, examination) must be paid.
Also, the application will lose its prioritized (Special) status if any of the following occur:
- The number of claims expands beyond 4 independent claims or 30 total claims, or includes a multiple dependent claim;
- The applicant files a Request for Extension of Time;
- The applicant files a Request for Continued Examination (RCE) without an additional request for Track One status;
- The applicant files a Notice of Appeal;
- The applicant files a Request for Suspension of Action;
- The USPTO mails a Notice of Allowance;
- The USPTO mails a Final Office Action; or
- The applicant abandons the application.
Nevertheless, in some situations, Track One might be very appropriate (e.g., when the applicant is pursuing new investors, a licensing deal, and/or potential infringement litigation).
When the need to expedite examination arises after an application has already been filed, a Track One request can be filed with a Request for Continued Examination (RCE).