Don’t Wait to File a Track One Request if You Think You Might Need It

Illustration of stop waiting sign with web buttonThe Track One program was instituted on September 23, 2011, as part of the America Invents Act. Known officially as the “Prioritized Patent Examination Program,” the USPTO promises a final disposition within 12 months for applicants who participate in the program and who pay the $4,000 fee for the privilege. To be eligible for participation in the program, an application can have no more than four independent claims and 30 dependent claims and no multiple dependent claims. Per USPTO regulations, applicants can request examination under the Track One program either from the date of original filing or with an RCE. In addition to the promise of faster disposition, practitioners have observed that Track One applications also seem to have higher allowance rates, although this could possibly be attributed to the relatively simple nature of applications with such limited claims.

We wanted to find out how beneficial the Track One program was for applicants who entered it at the beginning of prosecution versus at the RCE. The Track One program was ripe for study, which we originally started in 2015. This article is an update on our original findings, with a few new surprises thrown in.

2015 Study

In June of 2015, we published an article on this website titled “Want to Increase Your Chance of Allowance by 19 Percentage Points? That’ll be $4,000.” In that article, we measured the effects that the USPTO’s Track One program had on applications being prosecuted pursuant to the program, including time to allowance and average allowance rate, among others. What we found then was that Track One applications had, on average, an allowance rate that was 19 percentage points higher than non-Track One applications and received allowances 20 months sooner. See Figure 1 below for our previous findings.

Figure 1: Results of 2015 Study

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2016 Study

Since it has been well over a year since our previous study, we wanted to return to the Track One program to see how these metrics have held up. For our 2016 study, we took a more in-depth look at the data by splitting the applications in our analysis to three distinct groups:  Applications that were in the Track One program from the beginning of prosecution (“New Track One Applications”), applications that entered the program at the RCE stage (“RCE Track One Applications”), and a combination of all applications for which a Track One request was granted at any point prior to disposition. We measured allowance rate, number of months to allowance, and average number of office actions. For the purposes of this study, a “Non-Track One Application” is one that was eligible for the Track One program, but for which no Track One request was filed.

All Applications

When looking at our entire data set, applications in which a Track One request was granted performed significantly better than Non-Track One applications in every metric we measured. They had allowance rates 15.7 percentage points higher, received allowances 24 months sooner, and received 0.2 fewer office actions.

See Figure 2 below for our findings regarding all Track One and Non-Track One applications.

Figure 2: All Track One Applications

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New Track One Applications

We defined a “New Track One Application” as one in which a Track One request was filed simultaneously with the filing of the patent application and the Track One request was later granted. In other words, it is an application that has been part of the Track One program since the beginning of its prosecution history. We defined a “New Non-Track One Application” as an application that was filed after September 23, 2011, and was eligible for participation in the program, but for which no Track One request was filed.

New Track One applications account for the vast majority of all Track One applications, making up 95% of the total. As such, these types of applications have metrics similar to the average metrics for all Track One applications, although their allowance rate is slightly higher and they receive allowances slightly faster. Curiously, New Track One applications actually receive slightly more office actions than New Non-Track One Applications.

See Figure 3 below for our findings regarding New Track One applications.

 

Figure 3: New Track One Applications

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RCE Track One Applications

We defined an “RCE Track One Application” as one in which a Track One request was filed with an RCE or before the mailing of an office action in response to an RCE. A simpler way to put this is that they are applications that joined the Track One program after they had already received a final rejection and were in continuing examination. There are substantially fewer RCE Track One applications than New Track One applications, as they account for just 4.2% of the total.

 

As is to be expected, the benefits of the Track One program for these types of applications are diminished from applications that participated in the Track One program from the beginning of prosecution. While their allowance rate is only slightly lower than New Track One applications, their prosecution timeline is significantly longer and they receive quite a few more office actions.

See Figure 4 for our findings in regard to RCE Track One applications.

Figure 4: RCE Track One Applicationsfigure-4a-copy

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Takeaway

For applications in which a Track One request was filed simultaneously with the patent application, the benefits are manifold—higher allowance rates, faster prosecutions, and fewer office actions. For applicants who wait until the RCE stage to enter the program, these benefits are much less noticeable, especially when it comes to number of months to allowance and the number of office actions those applications receive. Given that there is a $4,000 fee to participate in the program on top of the fee for the RCE, prosecutors need to weigh the costs and benefits of the program carefully. If getting to a decision quickly is of paramount importance, filing a Track One request at the beginning of prosecution likely will be money well spent. For applications at the RCE stage, Juristat cannot recommend filing a Track One request given that the benefits of the program will be significantly reduced and will cost much more than they would have if the request had been filed at the beginning of prosecution.

The Author

James Cosgrove

James Cosgrove is a Legal Analyst at Juristat, a legal tech company that develops predictive models of the behavior of judges, patent examiners, attorneys, and other entities. He is a 2014 graduate of St. Louis University School of Law. A member of Juristat’s marketing team, he has written extensively about big data in the law, including Juristat’s first white paper on the effectiveness of data in patent prosecution and an e-book charting the effects of the Alice decision on the USPTO.

James Cosgrove

Katrina Brundage is a Data Scientist & Legal Analyst at Juristat, a legal tech company that develops predictive models on the behavior of judges, patent examiners, attorneys, and other entities. Juristat is used by Fortune 500 companies, NLJ 250 law firms, and boutique firms around the country. Katrina holds a J.D. and a M.S. in Business Analytics from Michigan State University. While at MSU Law, Katrina’s involvement in LegalRnD and ReInventLaw, MSU’s legal services innovation and technology initiatives, fueled her interest in legal analytics in the patent industry.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 3 Comments comments.

  1. mike October 31, 2016 12:54 pm

    “For applications in which a Track One request was filed simultaneously with the patent application, the benefits are manifold—higher allowance rates, faster prosecutions, and fewer office actions”

    I don’t think the data presented shows that this is a causal relationship, as you appear to state here. In other words, it isn’t immediately apparent to me that merely filing the Track One request is actually causing higher allowance rates and the other listed benefits. Rather, I believe this is a side-effect of self selection by the entities requesting Track One status.

    $4000, or even $2000 for small entities, is a significant cost in terms of patent filing, dwarfing all of the other official fees, and patent filers are carefully evaluating their applications for the program with regard both to the necessity for rapid issuance to their company and the perceived ease of obtaining a patent from the application. I suspect that application submitted for Track One consideration are claimed more narrowly and amended more readily and significantly than otherwise. In our practice, Track One applications tend to cover narrowly claimed embodiments already in advanced production planning or trials, with either parent or continuation applications progressing normally to broadly cover other aspects of the invention and block the me-too producers. This would also explain the fewer office actions – if you immediately accede to the Examiner’s argument and amend the claims accordingly rather than responding with your own arguments, it isn’t as likely that you will receive further rejections.

    Additionally, a client that believes an application is important enough to invest so heavily at filing is less likely to abandon the application after the first or second action. A lot of applications are filed early enough in the research process that it isn’t always clear the invention will pan out or be worth protecting even if it does. It is usually better to reserve the filing date with an application that you might abandon later than to take the chance on filing too late. It usually isn’t considered either necessary or in many cases even desirable to go directly into prosecution on these applications, especially at the additional cost of over twice the filing fees. I doubt that many Track One applications are abandoned by failure to file a Response to Missing Parts or Restriction Requirement.

    My guess is that the “benefits” of Track One consideration, beyond the time saved by having the application considered earlier, are simply the benefits of (1)separating the narrow claims from broader claims in the application and pursuing each separately; and (2) having products further along in the production process before the application is filed.

  2. Michael Zall November 1, 2016 7:44 am

    I would like to see how effective expediting because of age is compared to track one.

  3. Michael November 1, 2016 3:27 pm

    mike: I was going to comment that the authors have conflated correlation with causation, but you have already done an excellent job of explaining why that is true. Let me simply note my agreement with your post.

    Further, I disagree with the premise of the article, as reflected in the headline: “Don’t Wait to File a Track One Request if You Think You Might Need It.” Is there anyone who is considering filing a Track One Request with an application but decides to wait until the first RCE? I can’t imagine that as a viable strategy, since the bulk of an application’s pendency is from filing until first OA.

    Thankfully the article’s conclusion makes a much more reasonable point: there are only marginal benefits to filing a Track One at the RCE stage. That tactical point does not appear lost on the patent community, given the small number of RCE Track Ones.