Imagine That IP Law Blog

Congratulations! You are ready to file a United States (U.S.) non-provisional patent application for your invention. This is a major milestone for any startup. But what comes next? Is it just a waiting game? Well ... maybe not.

A challenge with the standard patent process is that U.S. non-provisional patent applications are subject to the overburdened queues of the U.S. Patent and Trademark Office (USPTO). USPTO statistics for an application show that the Traditional Total Pendency is 26.1 months to 42.9 months. (See Pendency Statistics USPTO from July of 2024). This means that, on average, a non-provisional patent application will slowly transition from filing to issuance over a two to four year timeline. Most of this timeline is spent waiting for formal patent prosecution to begin, i.e., receiving a first USPTO office action. An office action is an official letter sent by a patent examiner that provides a substantial ruling (e.g., objection, rejection, allowance) for the U.S. non-provisional patent application. USPTO statistics show that First Office Action Pendency period is an average of 19.7 months. (See Pendency Statistics USPTO from July of 2024).

No matter how you look at it, waiting over a year and a half to start formal patent prosecution is a lot of time to sacrifice to the standard patent process. Yet, there is another option!

The USPTO's Prioritized Patent Examination Program (referred to as the Track-1 Program) is an accelerated examination for securing a final patent application allowance within 12 months from the date that a Track-1 petition is granted. Filing the Track-1 petition must occur at the time of filing (or respective to a Request for Continued Examination) and be accompanied by the appropriate fees (~$4500 undiscounted fees). A major benefit of the Track-1 program is that Track One Pendency From Petition Grant To Allowance is reduced to 3.9 months. (See Track One Data USPTO for fiscal year 2024).

Example Timeline of a Track-1 Program:

1. Filing a U.S. non-provisional patent application with a Track-1 petition.
2. Receiving a USPTO grant of the Track-1 petition at two to three months from filing.
3. Receiving an Allowance at six to seven months from filing (i.e., 3.9 months from Petition Grant rounded up).
4. Note that Track-1 Process Timelines are 12 months from the Track-1 petition grant (or fourteen to fifteen months from filing).
5. USPTO statistics show that First Office Action Pendency period for the standard patent process is an average of 19.7 months.

As a takeaway, a startup company can procure an Allowance under the Track-1 program before formal patent prosecution begins under the standard patent process. This is a significant reduction of the patent process timeline. Further, this reduced timeline produces a higher level of confidence in building a patent portfolio and may translate to fewer office actions and associated costs, which would in turn offset the Track-1 filing fees. For instance, if an Allowance is received under the Track-1 program, the startup company can highlight the fast success before the USTPO in an investor pitch and contemplate a broader strategy for U.S. continuation and international applications leveraging the Allowance to build a patent portfolio.

More generally, using a Track-1 petition to trigger faster prosecution enables more informed business decisions for how to build a patent portfolio, raise capital, manage cost and budgets, and continue research and invention development.