Want to Increase Your Chance of Allowance by 19 Percentage Points? That’ll be $4,000

Attorneys have long suspected that Track One applications are more likely to get an allowance. Up to this point, however, it was mere speculation. Here at Juristat, we like to make data-driven decisions. That’s why we decided to test this hypothesis. It turns out that Track One applications are 19 percentage points more likely to receive an allowance than standard applications.

As a refresher, the USPTO’s Prioritized Patent Examination Program, widely known as Track One, took effect on September 26, 2011 as part of the America Invents Act (AIA). Under the program, the USPTO promises a final disposition in “about 12 months” for applicants willing to pay the additional $4,000 filing fee ($2,000 for small entities). To be eligible for Track One examination, an application can have no more than four independent claims and 30 dependent claims. Moreover, there can be no multiple dependent claims. The downside is clear: $4,000 is a significant sum. However, some benefits are also clear. Particularly, prioritized examination typically cuts pendency by several years. That promise alone is extremely valuable to many applicants. With that said, it seems there are other significant benefits to prioritized examination.

Average Time to First Exam

Let’s start with the obvious: Track One applications are reviewed much more quickly. On average, these applications reach first exam in 133 days. Standard applications take 697 days. Put another way, Track One applications are reviewed, on average, about 1.5 years earlier than their counterparts.

Average Time to Allowance

Also not surprising is the fact that successful Track One applications reach allowance faster than standard applications. In fact, on average, eligible applications are allowed 599 days earlier than standard applications. As above, this result was expected. After all, expediency is the point of the accelerated program. Clearly, if speed is essential, Track One is a great option.

RCE Win Rate

With regard to RCEs, Track One applications and standard applications are essentially equal. The win rate for Track One applications on RCE is 45%. Compare that with 43% for all other RCEs. Because these rates are so similar, an appeal may be a better option for Track One applicants.

Appeal Reversal Rate

Track One applications outperform standard applications on appeal. On average, examiners are reversed in 97% of Track One appeals. For non-Track One applications, that number is 84%. The difference here is incredibly significant. This 13% spread should not be overlooked. If a prosecution team anticipates an appeal, Track One may be well worth the additional $4,000 for this reason alone.

Average Allowance Rate

Perhaps the most shocking difference between Track One applications and standard applications is allowance rate. Standard applications have an allowance rate of 70%; however, Track One applications are approved 89% of the time. Put another way, a Track One application is 19 percentage points more likely to receive an allowance than a standard application. That’s a staggering spread. We identified three possible explanations for this:

1. Track One actually increases an applicant’s chance of allowance by 19 percentage points, so more people should apply for prioritization;
2. Stronger applications are more likely to be filed under Track One, thereby inflating the allowance rate (in other words, there’s a selection bias); and/or
3. Track One applications are commonly assigned to easier examiners.

We decided to dig deeper into the last point. To do so, we considered all examiners who’ve examined at least one prioritized application and 50 applications total. Based on these criteria, the average allowance rate for this group of examiners was 65%. That’s lower than the USPTO average of 70%. This rules out point three—that Track One applications are assigned to easier examiners. Nevertheless, it’s possible that inventors with stronger applications are more likely to pursue Track One. We plan to address this possibility in a future update.

Takeaway

Not only are Track One applications reviewed more quickly, they are more successful on appeal. Furthermore, these applications are 19 percentage points more likely to receive an allowance. Ultimately, selection bias aside, the question is whether inventors are willing to pay $4,000 for this increased chance of success.

A Quick Note about Methodology

The Track One data reflects the averages of all applications included in the program since its inception. The data for standard applications reflects the averages from a random sample of such applications.

All timing data is calculated based on filing and mailroom dates. More specifically, time to first exam represents the number of days between the filing date and the mailroom date associated with the first office action. Time to allowance is the number of days between the filing date and the mailroom date associated with the notice of allowance.

Finally, allowance rate is calculated by dividing the total number of allowances by the sum of the total number of allowances plus the total number of abandons.