Fixing Track One – USPTO Suggestion
Track One is a procedural option you have to expedite the examination of your patent application at the USPTO.
The fatal flaw creates an incentive for the examiner to either (1) allow the case quickly with thin examination or (2) kick you out of the program as quickly as possible (again, with thin examination).
Fix Number One: once in Track One, always in Track One.
The fix to Track One is to eliminate the “off ramp” by improperly incentivizing the Examiner to kick you out of the program through a Final Office action.
Fix Track One so that once you are in Track One, you can never leave. You get “Special Status” through multiple RCEs as well as expedited treatment in Appeals, just like every other situation for Special Status.
Addressing the Examiner’s Concerns
The Examiners, justifiably so, do not like Track One. It imposes a burden that they are required to respond within 10 days. This takes applications out of turn and upsets their docket. The Examiner’s normal cadence of work is turned on its head as they stop everything else.
From the Applicant’s standpoint the problem with Track One is that it encourages “thin” examination. Either the case is allowable quickly or not at all.
As someone who transacts in patents and needs them to be valuable, it severely weakens a patent if they get a Track One allowance. We want patents that are strong enough to survive litigation, not just a fancy plaque on the wall.
Fix Number Two: Give the Examiner 1.5X Counts for Track One
Acknowledging the burden on the Examiner to process Track One cases, both on the disruption to their normal workflow and the burden to do a complete and thorough examination, give the examiner extra counts for Special Status.
(The “count” system is the USPTO system for examiner productivity. Each fiscal year, examiners must meet a production goal measured in “counts.”)
By increasing the counts for Special Status, not only will the Examiner be compensated for upsetting their normal cadence, they have extra time to make sure the examination is thorough. The extra time allows the Examiner to conduct interviews with the Applicant, make sure all relevant prior art is made of record, and be confident that their patent, when allowed, will stand up through litigation.
Addressing the USPTO’s Management’s Concerns
USPTO management has been concerned that Track One would be flooded with applications. When it was first introduced, there were strict limits for the number of Track One applications.
Fix Number Three: Increase the Cost of Track One
Track One, when the incentives are correct, can have tremendous business value to Applicants. Based on that value, it is appropriate for Track One to cost more and even significantly more. This offsets the additional cost to the USPTO of “lower” production due to the extra counts given to the Examiner, and it serves as a barrier to the program being overwhelmed by requests.
Prosecution Strategy with a Fixed Track One
Having a solid, reliable Track One program gives Applicants the option – exercisable at any time – to speed up their patent applications. When a patent is not needed immediately, the Applicant can let the application progress at its normal speed.
When a patent is desired quickly, Applicants can pay the Track One fee.
A typical scenario for a startup company might go like this: file a patent application and elect Track One. One the patent issues, file a continuation application at the normal cadence.
This gives investors confidence in the IP asset for the company and help them raise capital, and it preserves the benefits of continuation application for decisions down the road.