Track One Prioritized Examination: When Paying for Speed Makes Sense

How USPTO Track One prioritized examination works, its claim limits and requirements, what its 12-month goal means, and when faster examination is worth the fee.

By , registered patent attorney. Published . 3 min read.

General information about patent law and practice, not legal advice about your situation. How these rules apply depends on the facts.

Track One is the USPTO’s prioritized examination program. For an additional fee, a qualifying non-provisional utility application is moved ahead in the examination queue, with the USPTO’s goal of reaching a final disposition within about 12 months, on average, of the date prioritized status is granted. Without it, the wait for a first Office action alone can be well over a year in many technology areas. For a company that needs an issued patent for fundraising, licensing, or enforcement, faster examination can be worth the cost.

What “final disposition” means

The 12-month figure is an average goal, not a deadline, and it is for a final disposition, not for a patent. Under the program, final disposition includes the mailing of a notice of allowance or a final Office action, the filing of a notice of appeal or a request for continued examination, completion of examination as defined for appeals, or abandonment. Track One shortens the timeline. It does not lower the bar for patentability or guarantee a particular outcome.

The requirements

The program’s requirements are set out in the USPTO’s rules at 37 CFR 1.102(e) and on its Prioritized Patent Examination Program page. They differ slightly depending on when the request is made.

With a new application. The request is filed with an original non-provisional utility or plant application. At filing, the application is to include the specification, claims, and any required drawings; either an executed inventor oath or declaration for each inventor or a signed application data sheet identifying each inventor; and the filing, search, examination, processing, and prioritized examination fees.

With a request for continued examination (RCE). Prioritized examination can also be requested for an RCE in a qualifying application, including one that entered the U.S. national stage. The request is filed with or after the RCE and before the first Office action responding to it is mailed. Only one request is available per RCE, and a second RCE in an application that has already received prioritized status cannot carry a new request.

In either case, the application can have no more than four independent claims and no more than 30 total claims, with no multiple dependent claims. Fees are reduced for small and micro entities, and the USPTO caps the number of requests it grants each fiscal year.

Ways to lose prioritized status

Separately from reaching a final disposition, prioritized examination ends if the applicant files a petition for an extension of time or a request for suspension of action, or amends the application to exceed the claim limits or add a multiple dependent claim. A request for an extension made before status is granted prevents it from being granted. After termination, the application returns to the examiner’s regular docket at its current stage. When the timeline matters, responses are planned to be filed on time without extensions.

When Track One makes sense

Prioritized examination tends to be worth considering when:

  • financing or an acquisition would benefit from issued claims rather than pending applications;
  • a competitor is entering the market and an issued patent could support licensing or enforcement;
  • the product cycle is short, so claims that issue years from now may cover an outdated version; or
  • a continuation is pursuing claims aimed at a specific product, and the company wants those claims examined quickly.

It may be less useful when the technology is still changing quickly and the company benefits from keeping claims flexible, or when the fee would be better spent on broader foreign filing or additional applications.

Other ways to speed things up

Track One is not the only option. Petitions to make special are available for applicants who qualify based on age or health, and some programs apply to particular technology areas from time to time. Examiner interviews and complete, well-supported responses can also shorten prosecution, whatever the queue.

Planning the claims for Track One

Because of the four-independent and 30-total claim limits, the claim set is planned with Track One in mind. A common approach is to focus the prioritized application on the claims that matter most commercially, and to pursue other claim sets in a later continuation. Prioritized status does not carry over to a continuation or divisional, but a new request can be filed with it.

A practical takeaway

If timing matters for your business, raise Track One before the non-provisional is filed so the claims, documents, and response schedule fit the program. A patent attorney or agent can estimate whether the fee is likely to pay off for your situation. For more on what happens during examination, see our article on patent prosecution.