On March 19, 2013, expediting examination will become less expensive as the USPTO lowers fees from $4,800 to $4,000 for the Track 1 prioritized examination program. For small entities, the Track 1 prioritized examination fee drops from $2,400 to $2,000. And for universities, the USPTO will start offering its new micro-entity rate, with a Track 1 fee of only $1,000 per application.
Under certain circumstances, Track 1 examination can be less expensive overall than normal prosecution, even accounting for the Track 1 examination fee. Our recent review of more than 350 expedited applications shows that, on average, allowed Track 1 cases receive only about 1.3 office actions, compared to an average of 2.6 office actions for a regular patent application. For many applicants, especially those entitled to small- and micro-entity status, this lower number of office actions may more than offset the cost of preparing and filing a request for Track 1 prioritized examination. The USPTO's Accelerated Examination program and the Patent Prosecution Highway (PPH) can also offer relatively few office actions, on average, to allowance. In addition, the grant rate for cases on the PPH is nearly 90 percent, which is nearly double the grant rate for regular patent applications.
Although Track 1 examination, Accelerated Examination, and the PPH all offer many benefits, each program carries different risks. First, the grant rates for the petitions to enter these programs vary from program to program. Second, the consequences of receiving a dismissed or denied petition vary as well. For example, the USPTO will refund the prioritized examination and place an application on the regular examination track if it denies a Track 1 request. In other cases, particularly for Accelerated Examination and PPH requests, the USPTO may offer the applicant a chance to cure any defects in the petition. In other circumstances, however, the consequences of receiving a denied petition may be more severe.
Based on extensive experience for evaluating options for obtaining patents faster and more economically depending on specific client situations, Foley attorneys continue to publish their findings and observation, including:
Law360 Intellectual Property: Beware Risks When Expediting USPTO Examination
Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:
Christopher Max Colice