Expediting Prosecution: Comparing Track 1 Prioritized Examination, Accelerated Examination, the Patent Prosecution Highway, and Petitions to Make Special Based on Age

Max Colice, Matthew A.  Smith, and Andrew Cheslock, Foley & Lardner LLP[1]

The USPTO’s new Track 1 Prioritized Examination program allows an applicant to reach final disposition (allowance, final rejection, abandonment) within 12 months of filing. To qualify for this program, an applicant must file a simple, one-page petition and a $4800 petition fee ($2400 for small entities). According to the USPTO’s Track 1 website, the current pendency to final disposition is just over 5 months.[2]  But how does Track 1 compare to the USPTO’s other programs for expediting examination?

Right now, the USPTO offers three other programs for expediting examination of utility applications: Accelerated Examination (AE), the Patent Prosecution Highway (PPH), and Petitions to Make Special based on an applicant’s age or health. Like Track 1, AE’s goal is to reach final disposition within 12 months of filing. Unlike Track 1, an applicant pays only a nominal petitions fee, but must conduct a search and submit an accelerated examination support document characterizing the search results. The PPH, in contrast, does not require a fee or a support document; rather, the applicant files a PPH request based on an allowance or favorable search report from a corresponding foreign or PCT application (if necessary, the U.S. claims must be amended to “sufficiently correspond” to the allowable foreign claims.)  According to the USPTO, examination of a PPH case should begin about 2–3 months after the PPH request is granted.[3]  And unlike the Track 1 and AE petitions, which must be filed with the application, a PPH request can be filed any time before examination begins. Petitions to Make Special based on an applicant’s age or health are free, but apply only to those applicants older than 65 or in very poor health.

Which of these programs is the best?  To answer that question, we reviewed approximately 350 applications filed in these programs since 2006 (the Track 1 applications date only from that program’s institution on September 26, 2011.)  We then determined the average and median times from effective filing date to date of allowance for the allowed applications in our sample, plus the standard deviation in these times:

Days from Effective Filing Date to Allowance

Program

Mean

Median

Standard Deviation

Track 1 Prioritized Examination

 184

207

101

Accelerated Exam (AE)

 317

248

292

Patent Prosecution Highway (PPH)

 565

543

215

Petition to Make Special Based on Age

 806

675

575

We found that the Track 1 applications were allowed on average 184 days after the application’s effective filing date, compared to 317 days for AE, 565 days for the PPH, and 806 days for applications made special based on an applicant’s age.[4] For reference, the average application pendency across non-expedited applications in 2011 was about 1240 days (1022 days when counting RCEs as new filings).[5] The data were clear: for the allowed applications in our sample, Track 1 was the fastest.

But that is not the whole story.  Despite its relatively high up-front cost, Track 1 applications may also be the least expensive to prosecute, especially for small entities.  To estimate prosecution costs, we tabulated the mean number of office actions for the allowed applications in our sample. Multiplying the mean number of office actions by an estimated cost to the applicant for preparing and filing a response and adding the extra petition costs, if any, yields an “expectation cost” for each program. We did not account for RCE costs because there were less than 3 office actions, on average, per application in each program.

We found that, on average, there were only 1.2 office actions to allowance for the Track 1 applications, 1.3 office actions for PPH applications, 1.7 office actions for AE applications, and 2.2 office actions for applications made special based on an applicant’s age. (For reference, the USPTO averages about 2.7 office actions per final disposal for other cases.[6]) If the cost of responding to an office action is about $2600 per recent AIPLA data,[7] then the expectation cost of filing and prosecuting a Track 1 application at large entity rates is $7920 (i.e., 1.2 × 2600 + 4800). In contrast, the expectation cost of filing and prosecuting an AE application is about $4420 plus the cost of conducting the pre-examination search and preparing the AE support document. If the cost of conducting the search and preparing the support document exceeds $3500, then filing and prosecuting a Track 1 application should, on average, cost less than filing and prosecuting an AE application.

In fact, the benefit of Track 1 for small entities may be even greater. At small entity rates, the expectation cost of filing and prosecuting a Track 1 application is only $5520. This means that Track 1 should be less expensive, on average, than AE if the cost of the search and the support documents (which does not change with entity size) is more than $1100 (the difference between the $5520 Track 1 expectation cost for small entities and the $4420 expectation cost for prosecuting an AE application). According to the AIPLA 2011 Economic Survey, a novelty search is about $2000, which suggests that Track 1 may be less expensive on average than AE for small entities.

For small entities, a Track 1 application has a good chance of being cheaper to prosecute than a regular application. Assuming 2.7 office actions on the normal track at a cost to the applicant of $2600 per office action, the expectation cost of prosecuting a normal application is $7020. Conversely, the expectation cost of prosecuting a Track 1 application for a small entity is only $5520—including the Track 1 petition fee.  Of course, the applicant should expect to incur all of the costs for a Track 1 application within 12 months (or less) instead of over 2–3 years (or more) as would be the case with a normal application.

In sum, Track 1 examination appears to be significantly faster on average than the USPTO’s other programs for expediting examination. Surprisingly, prosecuting a Track 1 application may cost less than prosecuting an AE application even accounting for the large fee for participating in the Track 1 program.



[1] The authors are attorneys at Foley & Lardner LLP.  This article reflects the views of the authors and not necessarily the views of Foley & Lardner LLP or its clients.

[2] http://www.uspto.gov/patents/init_events/Track_One.jsp

[3] http://www.uspto.gov/patents/init_events/pph/pphbrochure.pdf

[4] For comparison purposes, current Director Kappos recently quoted an average of 153 days to “final disposition” for Track 1 cases, with an allowance rate of about 50%.  The term “final disposition”, of course, includes a variety of actions other than the allowances in our study.

[5] http://www.patentlyo.com/patent/2012/03/total-patent-application-pendency.html

[6] http://www.uspto.gov/ip/global/patents/PPH_slides_for_WS_RT_(2).ppt

[7] The AIPLA 2011 Economic Survey gives response costs, in 2010, of $3000 for relatively complex electrical, computer, biotech and chemical cases; $2500 for relatively complex mechanical cases; and $1850 for minimally complex cases.

30 thoughts on “Expediting Prosecution: Comparing Track 1 Prioritized Examination, Accelerated Examination, the Patent Prosecution Highway, and Petitions to Make Special Based on Age

  1. Do you guys think that those AIPLA numbers are correct?
    2k for a novelty search
    2600 for an Office action response

    Those are a fair bit higher than what we charge.

  2. Very interesting,

    So then the answer to my question to you MaxDrei is that there is nosignificant dilemma” after all.

    I am also not sure why you thought anything else but that the number of PPH cases would be small. Every one of these special programs has always drawn but only a small number of participants.

  3. I think I can give a comment for your guess because I have worked at Korean Patent firm and now work at U.S. Law firm (Lowe Hauptman Ham & Berner, LLP). I handled so many cases of Korean company (Samsung, LG, SK..so on).

    PPH is not a highest option. PPH needs a granted patent at Korea Patent Office (KPO), but, it is not sure when drafting. We can consider it later if the application is allowed. Further, PPH filing needs an additional fee which includes drafting claim mapping chart fee. Thus, PPH is not widely used in Korea for U.S. filing, and is not considered when drafting Korean application claims. To avoid a burden of additional fees, almost out-going applications just use regular process.

    However, i) very important invention, ii) already granted at KPO, ii) needed to get a patent right ASAP, our client
    requests using PPH. I remember only under 5% of the out-going application used PPH process.

  4. Very interesting. Many thanks to that correspondent from Korea from which one can see how much potential there is in the PPH.

    My guess is that PPH usefulness is highest for a patent attorney in Asia who keeps in mind when drafting patent applications what’s going to be needed at the USPTO and the EPO. Can the F&L team tell us how many of the PPH filings they analysed were filed by corporations based in Asia?

  5. Oh, I think this place is more proper than above for my reply..I’m re-writing my reply.

    I’m a Korean patent attorney. In my case, PPH is quite useful for Korean applicants who granted their patent in Korea.

    Although it is true that claims for the rest of the world are usually sub-optimal for the USA, we can revise claims according to the country. PPH regulation requires “sufficiently correspond” of the claims, not “exactly correspond.”

    Since the invention is the same one, certain revising is accepted by USPTO, EPO, JPO, by such as a preliminary amendment. In my case, I didn’t got a serious problems about the amending claims according to the nature of the patent office when I use PPH. Thus, we can revise claims for max-optimal.

  6. I’am a Korean patent attorney. In my case, PPH is quite useful for Korean applicants who granted their patent in Korea.

    Although it is true that claims for the rest of the world are usually sub-optimal for the USA, we can revise claims according to the country. PPH regulation requires “sufficiently correspond” of the claims, not “exactly correspond.”

    Since the invention is the same one, certain revising is accepted by USPTO, EPO, JPO. Thus, we can revise claims for max-optimal.

  7. Well, none except what would happen at the EPO, the other way around.

    But who does have experience of PPH at the USPTO? Does anybody? That’s why I asked here. The F&L team looked at 350 patent applications but do not say how many of the 350 were PPH cases.

  8. That USPTO entry amendment might take the claims far enough away from the allowed ROW claims as to render them no longer “corresponding”

    Do you have any basis for this conjecture? Have you seen a rash of these “too far amendments?”

  9. Where the dilemma? That USPTO entry amendment might take the claims far enough away from the allowed ROW claims as to render them no longer “corresponding” and so a reason for 6 to bump the pending appln off the Highway.

    I imagine that the original reason to use the Highway, speed to issue, not only then fails but that Applicant is even longer to issue than if he had not tried to use the Highway in the first place.

    PTO examiners now routinely review the file wrapper in other jurisdictions anyway. EPO management currently runs popular seminars for its Examiner cadre, explaining how (with minimum waste of time) to extract the key stuff from the USPTO wrapper. Such eavesdropping renders the PPH superfluous. In my client’s interests, I would rather launch in to national prosecution, from the get go, with claims tailored to that jurisdiction, unburdened with any “corresponding” baggage. You?

  10. It is still very unclear just where you think the dilemma is coming from MaxDrei.

    Why do you think the PPH route introduces any additional difficulty for US prosecution?

  11. So, it is easier than I had supposed, it seems, and no dilemma. All you have to do is re-write the allowed ROW-type claim set, on arrival at the USPTO, to get swift allowance of claims optimised for the US jurisdiction.

    And what of “corresponding”? Meaningless? Forget it?

  12. I made the unwarranted assumption that readers interested in the PPH would have experience in prosecuting claims not only in the USA but also outside it.

    That assumption has nothing at all to do with my comment.

    Your post has to do with “correspondence with claims allowed in a foreign jurisdiction

    Typically such are relatively easy to deal with coming into the US via amendment (if necessary).

    Perhaps it is not the question you wanted to ask, but it is the question you did ask and it is the question I am responding to. Further, your additional post at 8:32 still does not indicate any great dilemma for coming into the US via the PPH.

  13. Thanks, anon, for the prompt. I made the unwarranted assumption that readers interested in the PPH would have experience in prosecuting claims not only in the USA but also outside it.

    Never mind. Here in reply is but one idea to chew on. Any constructive thoughts you get when reading what follows I will read with interest.

    ROW allows only one independent claim per “category”. You can have a method claim and an apparatus claim together, but not more than one of each (except in rare cases). So, to get adequate scope, one claims the invention in function form (ROW patent law lacking the 35USC112 constraint on what a M+F claim covers, and functional claims in the absence of the 112 constraint typically having the greatest reach) followed by a string of dependent claims in which the invention is claimed with more and more, incremental, step by step particularity. Is such a claim set optimised for the US jurisdiction? I had thought not. As far as I know, they usually attract clarity objections there, and their reach is uncertain. Writers here regularly lament that the claims they get from clients outside the USA are hopelessly lacking in clarity.

    Conversely, from my own experience, sets of claims optimised for the USA attract objection in ROW and typically cannot get to allowance. Or, if they do, they don’t cover the invention properly.

    Is that not a dilemma, for the Applicant contemplating using the PPH?

  14. I’m grateful to Carl Oppedahl for pointing out the many good things about the PPH. but can he (or F&L, or A N Other) address the requirement set out above by the F&L writing team, that:

    “….the U.S. claims must be amended to “sufficiently correspond” to the allowable foreign claims…..”

    I know that there is a long list of foreign Patent Offices participating in the PPH program, but does not this requirement for correspondence with claims allowed in a foreign jurisdiction present Applicants at the USPTO with a significant dilemma. Does F&L have any positive experience that it can report to us?

  15. Thanks Carl-

    Great information to know in these changing times,with so many things happening so quickly. This article is excellent Dennis, even if you didn’t write it, and is very timely for some of us.

  16. Carl: Your PPH presentation at Washington and the West was terrific. I thought of mentioning it in response to MaxDrei, who asked “Has any attorney had anything good to say about the PPH?”

  17. Thanks to the authors for carrying out the study. It is important to keep in mind, however, the many costs associated with Track I (as compared with PPH) that were not mentioned in the article. For example to file Track I you must satisfy strict limits on numbers of claims (30) and independent claims (4). You must agree in advance not to traverse any restriction requirement no matter how unreasonable. You are not allowed to hand in your signed declaration even one day after filing day. If you take even one day of an extension of time, you are off the Track. The “special” status evaporates the moment you file a Notice of Appeal (in other words your appeal will take years to decide). The “special” status evaporates if you file an RCE. You have to pay the pub fee up front which means you lose it if the case goes abandoned. You can’t use Track I with an already-pending case.

    In contrast if you use PPH, you save all of these costs. There is no artificial limit on claim count. If an RR is unreasonable you can traverse it. You can hand in your signed declaration after filing day if needed. You can take an extension of time without losing “special” status. The “special” status forces the Board to decide your appeal fast instead of putting it off for years. You can use an RCE and the “special” status will persist. You aren’t forced to pay the pub fee up front which means if the case goes abandoned, you never have to pay it. You can use PPH with an already-pending case so long as it has not yet been examined.

  18. The data is meaningless without a comparison of the claims submitted in each type of application. A “plurality of thresholding units” points out, patent attorneys may be submitting very tight claims with track 1 and AE applications to make sure they don’t waste the effort and the big fee. Many regular applications go in with claims that are way too broad, and are followed up with round after round of argument. A good comparison, however, would be extremely burdensome and subjective. So the message is what we all know: file narrow claims, and prosecution will go more smoothly; file broad claims and it takes longer; file goofy claims and it will take forever.

  19. I wonder if it may also be a factor that a client willing to pay an extra $4800 for a petition fee may well also have been willing to pay for a decent pre-filing prior art search and for writing a better spec and claims in view of the search results?

    The “Petition to Make Special” pendency numbers above seem to suppport the old cynical view that the petition may actually slow the case down?

  20. Hal Wegner reports that “several dozen – or scores of hundreds – of patent applications remain pending” that predate the 1995 GATT treaty.

    Why? What are the excuses?

    If I’m one of these pre-GATT applicants who has related non-GATT applications pending, why exactly would I do anything to speed up the prosecution of a pre-GATT case? The more time goes by, the more pervasive my “fundamental” 30 year old technology becomes. What are the odds that one of those genius applicants “invented” wireless mobile devices, a virtual map, text/image-based searching, a computer-controlled car and/or a method of selling something to a customer using information about the customer and a computer (all disclosed in the same awesomely detailed application)? Probably 100%. And the odds that the USPTO will grant a claim just about that broad? Probably about 50%. Another decade of table pounding couldn’t possibly hurt.

    I’m still waiting to see an example of a poor ordinary pre-GATT inventor getting an undeserved shaft from the USPTO. Someone made one very pathetic attempt at such a showing here. That was good for a laugh. Who wants to float another example?

  21. Hal Wegner reports that “several dozen – or scores of hundreds – of patent applications remain pending” that predate the 1995 GATT treaty.

    Why? What are the excuses?

  22. For comparison purposes, current Director Kappos recently quoted an average of 153 days to “final disposition” for Track 1 cases, with an allowance rate of about 50%.

    That’s quite a bit lower than the average allowance rate, if I’m remembering correctly.

    So therein may lie the answer … I seem to recall the allowance rate for AE applications is higher than average. So it could be that apples and oranges are being compared here to some extent, as suggested by APOTU at 12:17.

  23. This study seems to assume that all attorneys prosecute all cases identically. Some of the variation here may be associated with a tendency for attorneys to prosecute different kinds of special cases in different ways, or a tendency to use different kinds of special status for different purposes, either of which could result in a shorter or longer time to final disposition. Time to first action should have also been mentioned, because it eliminates much of the differences arising from attorney behavior.

    The study also ignores the costs associated with extension of time fees, which you can’t get in a Track 1 case without falling out of Track 1 status. Not a bad incentive for getting things done more quickly, to avoid telling a client that you wasted their $4800.

  24. We found that, on average, there were only 1.2 office actions to allowance for the Track 1 applications,

    What could be possibly go wrong with an awesome program like this???

    I’m trying to process how it is possible that if I do my own search and examination of my claims (as required for the AE) I still can expect more office actions than if I simply throw a wad of cash at the USPTO.

    Heckuva job, Kappos.

  25. I’m curious. Has any attorney reader anything good to say about the PPH?

    Claims for the rest of the world (ROW) are usually sub-optimal for the USA (and vice versa, of course). So, going to issue in the USPTO with ROW claims not tuned to post-issue life in the US jurisdiction: how does one put a price on that?

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