In August 2013, the U.S. Patent and Trademark Office (USPTO) reported a backlog of 591,665 patent applications waiting to be examined and an average total pendency (time from filing to end of examination) of 29.4 months. In order to reduce these statistics, the USPTO developed four programs designed to speed up the examination of patent applications. These programs are Track One Prioritized Examination, Accelerated Examination (AE), Petitions to Make Special and the Patent Prosecution Highway (PPH).
Track One Prioritized Examination allows applicants to pay an additional fee of $4,000 ($2,000 for small entities) to move to the head of the queue. Once granted priority status, an applicant can expect to have an examination completed within 12 months, which is significantly shorter than the current 29.4 month waiting time other applicants can expect.
Accelerated Examination has the same goal of completing the examination within 12 months. Unlike Track One, an applicant pays only a nominal petition fee of $130; however, applicants must conduct a prior art search and submit an Accelerated Examination Support Document in which each claim limitation found in each of the references is identified, both in the prior art and application specification, together with a explanation pointing out how each claim is allowable over the prior art. The petition fee for Accelerated Examination can be waived for inventions directed to environmental quality, energy or countering terrorism.
Petition to Make Special can be filed based on an applicant’s age or health, but applies only to those applicants older than 65 or in very poor health. In such cases, the applicant is not required to submit an Accelerated Examination Support Document.
The Patent Prosecution Highway is only available to applicants who have received an allowance or favorable search report issued in conjunction with a corresponding foreign or Patent Cooperation Treaty (PCT) application. In such situations, applicants can submit the same claim(s) and examination history for consideration and approval to the USPTO. According to the USPTO, examination of a PPH case should begin about two to three months after the PPH request is granted; however, the prosecution is not accelerated beyond being advanced in the queue for starting examination.
Analyzing Application Programs
In his December 27, 2012, Patently O blog entry, University of Missouri School of Law Associate Professor Dennis Crouch presents the results of an analysis of approximately 350 applications filed in these programs since 2006 to determine which of the above programs was the best. His analysis found that the Track One applications were allowed, on average, six months after the application’s effective filing date, compared to 10.4 months for Accelerated Examination, 18.5 months for the Patent Prosecution Highway, and 26.4 months for applications made special based on an applicant’s age. Over the same timeframe, pendency for non-expedited applications was about 40.7 months. Clearly, Track One was the fastest.
Based on a cost analysis, Crouch concludes that, “Surprisingly, prosecuting a Track One application may cost less than prosecuting an AE application, even accounting for the large fee for participating in the Track One program.”
In addition to the cost and speed of the examination process, it is important to consider allowance rates. The allowance rate for Track One applications is reported to be about 50%, which is similar to the allowance rate for non-accelerated applications. This finding is consistent with the comment made by the Chief Policy Officer and Director for International Affairs, Shira Perlmutter:
For those applicants or practitioners concerned about whether Track One applications will be treated differently from others in terms of grant/denial rate, our examiners are being given exactly the same training, credits and incentives to accurately examine Track One cases as for all other cases, and no training, credits or incentives are being given to bias examiner decisions in any way. And as for the data, given the statistics provided above, so far there is no basis to believe there is any difference in result for Track One versus non-Track One processing, other than the significantly faster responsiveness.1
The allowance rate for applications examined in the Accelerated Examination program is about 67%. This high allowance rate seems reasonable considering that, in theory, these applications are allowed over the prior art submitted in the applicants’ Accelerated Examination Support Documents.
The allowance rate of PPH applications is greater than 90%. This high allowance rate is reasonable considering that the allowed claims were previously allowed in a corresponding foreign application or were the subject matter of a favorable PCT search report. This prior determination was accorded full faith and credit by the U.S. examiners.
Crouch was correct in concluding that prosecuting a Track One application may cost less than prosecuting an Accelerated Examination application, even accounting for the large fee for the Track One program. However, the higher allowance rate associated with Accelerated Examination applications might be compelling enough to offset the cost and pendency differences.