Updated April 2020
Why the USPTO’s Track One is the mark of a lazy patent attorney.
If your patent attorney is suggesting “Track One” to expedite your patent case – be wary. It is a trap.
I would go so far as to say that Track One is the mark of a lazy patent attorney.
Let me explain why.
Track One and Patent Prosecution Highway are two USPTO programs that give your patent application “Special” status.
Special Status is the USPTO’s streamlined examination process. The USPTO gives special status for inventors who are over 65, for inventors in poor health, and other reasons. In many cases, the USPTO will do pilot programs or tests where they will give different technologies Special Status, such as “green tech” and other technologies.
What does Special Status mean?
Special Status means your patent application is advanced “out of turn.” It goes to the top of the pile.
In reality, the application goes onto an examiner’s 10-day docket, meaning that they MUST handle the application within 10 days – no exceptions.
What does that mean? It means that the Special Status case is a pain for the examiners. It complicates the normal cadence of their workload and does not allow them to manage their docket effectively.
Examiners hate Special Status cases.
It should be noted that every program offered by the USPTO is carefully negotiated with the examiner’s union. The union vigorously fights any and every program by Management that adds to a union member’s workload in any way – and many of the programs are crippled because of this.
Track One is a program where the USPTO will put your patent on Special Status for a fee. The fee is relatively steep by USPTO standards – about $2500 for small entities.
Here’s the issue – and what most patent attorney’s don’t appreciate: Track One incentivizes the examiner to do either a thin (read: not good) examination OR to kick you out of the program.
The examiner only has a limited amount of time to understand your patent application, read it thoroughly for spelling mistakes and the like, review the figures, make sure each callout in the figures is referenced in the specification, digest your claims to find the point of novelty, make sure the claims have support in the specification, search the prior art to find the elements of the claims, construct an argument that tries to assemble the prior art into the elements of the claims, and write everything down.
Only if the claims are ridiculously narrow and easily allowable (read: not good), the examiner will allow the case and you get a patent. The examiner’s workload is based on a “count” system that has a perverse incentive to allow cases fast – and it is especially bad in September.
If the claims are reasonable (or too broad), the examiner needs to err on the side of caution and reject the claims to let your attorney argue them a little bit.
Here’s the killer part: the examiner kicks you out of Special Status when they get you to a Final Office action.
The examiner’s incentives for Track One are misaligned with the applicant’s.
The examiner needs to either (1) allow a ridiculously narrow claim or (2) kick you out of the program quickly. Neither of these options are good for the applicant.
Track One for an RCE
Track One is still available when you get a final rejection. You are required to file a Request for Continued Examination AND pay the Track One fee again.
What do you get? You get expedited examination for your amendment.
I have actually seen file wrappers where patent attorneys have bilked their clients out of a Track One fee ($2500 for small entities) and received expedited examination after an RCE.
Turns out that the average response after an RCE is a mere 2.2 months anyway. What does this mean?
It means you would have had a quick turn around anyway. But you got the pleasure of paying a needless $2500.
Patent Prosecution Highway
Patent Prosecution Highway (PPH) is a different program than Track One – with a couple very important features.
The first feature is the PPH program is negotiated not with the Patent Examiner’s Union, but with other patent offices.
PPH is where a patent will be given Special Status if another patent granting authority has said the claims are allowed.
For a US filer, the PPH program can be entered by having another country (or the PCT process) examine the claims. Once the claims are allowed, you file a no-cost petition and are granted Special Status.
Here’s the unadvertised feature of PPH Special Status – and why most patent attorneys don’t do it: once you get Special Status from PPH, you cannot get kicked out.
Unlike Track One, where the examiner has an incentive to either allow ridiculously narrow claims or kick you out of the program, PPH means you can leverage the examiner’s knowledge and experience to help you.
Because the examiner cannot kick you out of the program, the examiner has every incentive to help you get allowable claims.
The examiner is one of the most valuable but untapped resources of a patent applicant.
Examiners are part of a unionized government bureaucracy, yes, but examiners concentrate on specific technologies. In many cases, they have been working in your specific technology for many years – and they have seen everything in that technology.
There is nobody on the face of the planet who knows your technology better than a patent examiner. They have been searching this technology over and over – and many know the prior art references cold.
When you can tap this resource, a skilled patent attorney can get the best claims for their client. This is where the magic happens.
With PPH, the examiner knows they cannot kick you out but they need to find something allowable. This is where the patent attorney can have a productive interview with the examiner and get to the heart of the matter.
The attorney is on a more even negotiating plane with the examiner during PPH: if the examiner rejects the claims, the attorney kicks back a response which the examiner must handle in 10 days. This can go on and on until there is something allowable.
How does the interview work? The attorney should have the point of novelty that they want to protect. By talking the issue through with the examiner, the two of you can put your heads together to find claim language that is allowable yet meets the client’s needs.
The key here is the alignment of interests.
Under PPH, the examiner needs to allow some claims – otherwise the applicant will pester them with Special Status responses that make the examiner’s life a living hell. By tapping into the examiner’s expertise, a skillful attorney can get the examiner’s help to find good claim language.
Under Track One, there is no alignment of interests. The examiner’s incentive is to allow something narrow or nothing at all – and kick you out of the program.
The Cool Things About PPH
Patent Prosecution Highway costs about the same as Track One – but it is more work for the attorney.
Track One is $2500 for small entities – which is about the same as filing a PCT application.
In Track One, you are allowed only a limited amount of claims. A PCT application can have unlimited claims – you pay only $14/page to include more claims.
With a properly constructed claim set for a PCT application, you should be able to get a very good examination and find where the allowable material will be.
Most clients at least consider a PCT application for their valuable patents, so the PCT costs are something they would already pay. To do PPH, you merely file the PCT application right away.
Yes, there is a little bit more work with PPH than Track One, but it is work that would have – or should have – been done anyway. If your patent attorney is suggesting Track One – go find another patent attorney. They are just being lazy.