On January 31, 2011, the White House announced the launch of the Startup America initiative and noted that the Department of Commerce was “finalizing a plan to allow entrepreneurs to request faster review of their patents, an initiative that should lower patent pendency times overall and speed the deployment of new ideas to the marketplace.” The U.S. Patent and Trademark Office (USPTO) had, in fact, proposed a new Three-Track examination program in a press release on June 3, 2010. On February 3, 2011, the USPTO followed up on the White House announcement with details of the Three-Track program, as well as another new effort known as Clearing the Oldest Patent Applications (COPA) to reduce the growing backlog of applications that were more than 16 months old. The USPTO stated that “over time, COPA and the Three-Track program will help to lower overall patent pendency and speed up the time it takes for applicants to get a decision on their patent applications.”

The proposed Three-Track program was to include: Track One, which would accelerate examination to provide a final disposition (either patent allowance or a Final Rejection) in no more than a year; Track Two, which would represent the normal examination process (having a current average pendency of about 34 months when RCEs are factored out); and Track Three, which would allow an applicant to defer examination on their patent application for up to 30 months from the earliest priority date.

After reviewing public comments on the Three-Track program that were solicited in a Federal Register notice on February 4, 2011, the Department of Commerce announced that “in light of the fact that the vast majority of public input was supportive of the Track I portion of the 3-Track proposal, the Office proposes by this Notice to proceed with immediate implementation of the Prioritized Examination Track (Track I).” The Three-Track program (or rather the first track of the program) thus became referred to as Track One Prioritized Examination or simply Prioritized Examination, and the USPTO began accepting Track One applications on September 26, 2011.

Near the first anniversary of the program, about 5,500 petitions were filed with requests to enter the program, and the allowance rate was just over 50%. Six months later, a total of 8,554 petitions were filed, and the allowance rate hovered at just under 50%. These initial allowance rates were only marginally higher than the allowance rates of non-Track One applications at the time.

In 2015 and 2016, studies were conducted that compared allowance rates of Track One applications to non-Track One applications. These studies showed that in 2015, the allowance rate for Track One applications was 19% higher than non-Track One applications and the applications were allowed 20 months sooner than non-Track One applications. In 2016, the allowance rate was 15.7% higher and the applications were allowed 24 months sooner than non-Track One applications. The 2016 study also showed that Track One applications that were filed with a Request for Continued Examination (RCE) during examination had a lower allowance rate, incurred more office actions, and took more than three times longer to get allowed. These findings clearly suggest that if an applicant has any interested in seeking prioritized examination via Track One, the request should be filed with the initial application filing.

The most prominent benefit of Track One examination is how quickly an application can be allowed (currently 18.8 months faster than non-Track One applications). Getting an application allowed quicker has the advantage of fending off competitors and confronting or stopping infringers early. In the case of technologies that have short lives or quick turnover, getting an allowance 18-20 months early may be invaluable. For those applications that will be licensed, royalty streams based on the term of issued patents can be extended proportionally to the speed at which allowance is obtained. Faster prosecution can mean less prosecution estoppel that can adversely limit the scope of allowed claims.

While the current cost for requesting Track One examination includes an extra $4,000 fee ($2,000 for a small entity), one has to consider that the cost of responding to an office action can range from $2,500-3,000. Accordingly, in the case where a Track One application reduces the number of office actions by one, the extra cost for a Track One examination is greatly minimized and far outweighed by other considerations. It seems that the benefits of Track One examination can more than offset the initial request fee for applicants who need to get their patents granted quickly.