David Kappos is Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. He assumed that role within the Obama Administration when he took over the USPTO in August of 2009, nearly 32 months ago. Upon arrival Director Kappos found a largely dysfunctional Patent Office, which had really become the “No Patent For You” Office owing to the philosophical and ideological beliefs of the prior Administration. This lead to the development of a massive backlog of un-examined patent applications and played no small part in the severity of the economic collapse and the sluggish rebound. We have a technology based economy and start-up companies that are the backbone of our economy struggled without patents to attract capital investment, expand and hire.
There is still a massive backlog of patent applications, but things are undeniably turning around. There are certainly some pockets of resistance within the USPTO, See Business Methods by the Numbers, but the Patent Office is by-and-large open for business. The USPTO has returned to the historical philosophy that patent examiners should work cooperatively with patent applicants to identify allowable subject matter and issue patents on what is allowable, not just focusing on rejection after rejection after rejection.
While there are quite a few positive changes, with more in the works, Track One is by far the most successful policy initiative that has come to bear during the Kappos Administration. The only problem with Track One is that more applicants are not using it! What are you waiting for? A look at the numbers shows that Track One is a huge success and ought to be employed far more than it has been.
Track One Statistics
Track One has been a huge success, but significantly under utilized, which is not surprising I suppose. Patent attorneys are almost all “small c conservative,” and are not known to take chances or change things up for the sake of change. That is understandable, but that typical aversion to all things new needs to come to an end. Just look at the statistics.
- As of March 21, 2012, thirty-seven (37) Track One cases have resulted in issued patents.
- Of the 37 patented cases only 1 received a final rejection.
- In total, 167 Track 1 cases have been allowed as of today (including the 37 issues).
- So far 57 applications have received a final rejection, with three applications expressly abandoned.
So what is the allowance rate? It is really impossible to give a specific answer to that question because it takes a minimum of six months for a case to go abandoned for failure to respond to an action, and the Track One program is only about six months old, so no cases have even had a chance to be abandoned for failure to respond. Nevertheless, if we make the assumption that all of the finally rejected cases wind up being abandoned the allowance rate would be nearly 75%! As after final responses and amendments are filed we can expect that number to go up.
Of course, the sampling of cases that have worked their way through is relatively small, but a 75+% allowance rate with the overwhelming majority of issued cases being allowed even before a final rejection is impressive. The cost to file a Track One petition is $4,800, which is cut in half for small entities, so there is no doubt a self selecting aspect at play. Those willing to pay the extra fee are likely to be very serious and willing to present claims that can be allowed, but if you need a patent quickly, perhaps within 6 months, you can obtain one and the odds are in your favor if you file a realistic set of claims. You can always go back for more later.
Some more numbers; as of March 12th, 2012, 1,903 decided petitions have been granted under Track One, 631 are pending, and 45 have been dismissed. Of those applications granted for accelerated review in FY2012, approximately 1,388 have received a First Office Action, making the average timeline on a First Office Action (from petition grant) 1.35 months for applicants participating in the program. First Office Action pendency for applicants not participating in Track One, and going through normal processes, averages at 22.7 months, making Track One an incredibly efficient tool for businesses that need a patent immediately. Furthermore, more than 833 applicants have taken advantage of the 50% discount given to small entities.
Why File a Track One Application
1. Saving money and getting patent faster
What if you could demonstrate to a client that they would likely, or perhaps almost certainly, spend less money paying the $4,800 acceleration fee (or $2,400 for small entities) under Track One? That would make Track One a no-brainer, right?
One of the frustrating things is not being able to tell a client how much they are going to need to pay post filing and prior to obtaining a patent. This is complicated by the fact that with some patent examiners you will get more than the typical 2 Office actions in a case, and with many patent examiners it is still unrealistic to anticipate obtaining a patent without at least one RCE filing (i.e., Request for Continued Examination).
Patent Attorneys Chris Holt and Joseph Kelly created the PatentCore™ system, which is an easy-to-use online tool that allows you to obtain actionable and immediate intelligence on any patent examiner and on any Art Unit, including the average number of Office Actions per case, whether an RCE is going to likely be required before patent issuance, and even whether you are likely to get a patent without appealing. For example, in Art Unit 3689 it seems virtually certain there will be no patent for you unless you appeal.
In the scenario where you are working with a patent examiner or Art Unit that likes to drag things out and/or only issues after the Board orders them to do so, it makes all the sense in the world to pursue Track One. At the very least you get to appeal sooner. But the senior management, including Director Kappos, are looking at Track One statistics very carefully. This is their baby. I just cannot see patent examiners or Art Units playing fast and loose with Track One applications when the statistics and process are being so carefully monitored.
2. A competitor isn’t quite literally infringing
How many times have you reviewed a patent and an allegedly infringing device or service and thought to yourself — if only the claim said it this way or that way? You cannot help all clients with that, but with clients who are large enough to be doing what they should be doing, there will be one or more patent applications that remain on file keeping a continuous chain all the way back to the parent application. What if you could file a patent application on claims that are written to cover that allegedly infringing device? If you have to stand in line this is hardly a strategy because waiting 4 to 5 years (or longer) to go after an infringer is not a business solution for the aggrieved patent owner. But waiting 6 to 9 months makes all the sense in the world if you can get a picture claim that the competitor specifically infringes.
I am not suggesting playing fast and loose with the rules, but we all know that a well drafted parent application followed up by similarly well drafted continuation-in-part applications can support far more claims than most clients are willing to pay for in a patent. I would never suggest doing anything unethical, but if you have support in a pending patent application for what your competitor is doing for goodness sakes file a Track One patent application, get a claim the competitor infringes and go after them!
I’ve heard that many who work in certain technology fields, such as biotech and the chemical area have no interest in obtaining patents quickly. I get it, but when faced with imminent licensing or potential litigation there will be circumstances where Track One is the exact right thing to do in any and every technology field.
3. Minimize prosecution history estoppel
One of the benefits of Track One is that the prosecution of the patent application is condensed over a period of a few months rather than dragged out over a period of multiple years. That means that the application will remain far more fresh in the mind of the patent examiner, which should lead to a cleaner, less problematic prosecution. At the very least the patent examiner will be more up to speed with every touch because the last touch was only a few weeks ago. That means less background explanation needs to occur when you speak with the examiner and when you file Amendments and Responses.
When I interviewed Deputy Director Terry Rea she indicated that there was some thought that the Track One process would be so successful that it could become the model for the future of all prosecution. Not in that everyone will obtain a patent within 12 months, but rather that patent examiners would be encouraged to pick up a file and work with willing applicants over a condensed time frame so that there is better institutional memory on the part of the USPTO with every touch.
The USPTO is finding condensed prosecution over a period of months leads to significant streamlining of the prosecution process. What that means is fewer Amendments and Responses, which means less opportunity for prosecution history estoppel. This is supported by the statistics above. Out of 37 issues patents only 1 was issued after a final rejection. That means 36 of 37 issued patents from Track One have been issued without getting a final rejection. That alone means that there is less prosecution history estoppel because there is no need to amend after final rejection and no RCE (or series of RCEs).
Frankly, if your client has a commercially relevant innovation it makes all the sense in the world to pursue Track One just based on the fact that there is less opportunity for admissions and arguments made during prosecution.
With all of the benefits associated with Track One, including lightening fast prosecution, a high allowance rate, less prosecution history and the ability to obtain claims quickly for litigation or licensing purposes, if you are not advising clients to consider Track One you could arguably be committing malpractice. Ultimately the decision is the clients, and we all know that clients make decisions that are against their interest and against the advice of counsel all the time. But you really need to become acquainted with Track One and its potential.