Examination Quality vs Speed
The USPTO has had an accelerated examination program known as “Track-1” since 2011. The program allows patent applicants to advance a patent application out-of-turn such that a determination can be made within 12 moths of filing. That is, like a Lightning Lane of sorts (for you Disney fans) to skip the typical wait times for patent examination. In this way the program is said to be designed to foster “faster innovation.”
In theory, it is a great idea. If you are a start-up, for example, and need to get your claims allowed quickly for business reasons. Paying a fee for the expedited attention, agreeing not to extend filing dates of responses, and limiting the number of claims, is a fair compromise.
But, if patent examiners are rushed to judgement to meet internal deadlines, and do so without the most relevant information, the USPTO is doing the public a disservice. Recent trends also suggest that examiners may be moving these cases to allowance to get time-sensitive work off of their dockets.
I review large patent portfolios all the time, and Track-1 filings are increasingly common—especially in portfolios being actively litigated. This makes sense from a strategic standpoint as Patent Owners are adapting to arguments made in litigation via continuation, or, more nefariously, hoping to secure further patent claims prior to an adverse decision on a co-pending IPR. But, I am not sure the USPTO is providing a needed service to the American public by including litigated patents in this program.
Recently I’ve noticed a disturbing trend of first action allowances. In fact it is rare that I see an office action in a Track-One filing at all. This is borne out in the most recent statistics from the USPTO showing that the time from granting a request for Track-One to allowance is under 4 months! That is impressive given the expectation was “under 12 months.” This statistic would not be possible without a very high number of first action allowances. But, first action allowances are relatively uncommon in standard prosecution. Moreover, for litigated portfolios, does it really make sense to expedite additional claim sets through to issuance? Especially where there are mountains of PTAB and/or district court documents for the examiner to wade through? There is simply no way to do that in the current time frame without cutting corners, which appears to be the current trend.
Track-One filings remain at the top of the examiner’s docket given their expedited nature. I have spoken to a number of examiners that believe that the first allowance rate is driven by examiners not wanting to deal with the headache of the recurring deadlines (where there are few such strict deadlines in the typical ex parte docket). While this is a problem with the system in general terms, it is especially problematic where litigious entities are able to take advantage of this dynamic to spawn out new claim sets.
The agency only allows a certain number of Track-One filings per year (15,000 last updated). These slots should be open to those seeking to foster faster innovation as contemplated by the program’s design, not foster more litigation. The Track-One program would benefit from a revision that would exclude currently litigated portfolios from Track-One filings as there is simply too much outside information to digest on an expedited schedule. Indeed, as some examiners appear to allow Track-One filings with less scrutiny than given to other applications, this is all the more reason to exclude such filings from the program going forward.