PPH? Why not use Track I?

The EFS-Web listserv is for patent practitioners before the USPTO.  A recent series of postings prompted me to offer a reminder of the potential benefits of PCT-PPH, and prompted a list member to ask:

If you are going to pay the cost of filing a PCT, why not just file TRACK I?

Here are my suggestions why I recommend not using Track I.

(By the way, if you are a patent practitioner before the USPTO and have not already joined that listserv, you probably should join it.  You could always unsubscribe later if you were to decide it’s not for you.)

The listserv discussion began with this lament from a listserv member:

I filed a patent application for a simple mechanical device for a client in May 2012 — 2 years ago. Responding to a client query re status, I telephoned the art unit today and learned they are currently getting first Office actions out for applications filed in December 2011! Their estimate is that it will be another 6 months until we received an Action.

Does this seem a bit unreasonable? Who at the PTO should I be taking to about this?

Another listserv member responded:

On a software patent application you can wait 5 years for an office action. Some clients are complaining and/or opting to forgo patent protection since their invention will be obsolete before the patent issues.

Patent reform?

Here is what I wrote:

The way to get a software patent fast … or a simple mechanical patent fast … is pretty clear.

File a PCT (even if the client has no interest in foreign filing).  Pick ISA/KR.  Begin the US national-phase entry but without requesting immediate processing.  Receive a fully favorable Written Opinion (for this to work we have to assume for sake of discussion that the invention is novel and possesses an inventive step).  Later the same day, perfect the US national-phase entry, and in the same filing package, file a PCT-PPH petition and an Express Request for immediate national-phase processing.  Nudge USPTO as required to get the Filing Receipt and to get an Examiner assigned to the case.

With this sequence of events, we sometimes have a granted patent within 12 months of the first filing.  Maybe 40% of the time the first office action is a notice of allowance.  The prompt grant, when it happens, happens regardless of the backlog in any particular art unit.

Which then prompted this question from an alert listserv member:

If you are going to pay the cost of filing a PCT, why not just file Track 1?

Here is what I think about that.

Track I costs a lot of money.  For a large entity, $4000.  To get on Track I you have to pony up the money at a time when you do not know yet whether your invention is patentable.  In contrast with PCT-PPH, the expense of entering the US national phase is incurred only after you have in hand a Written Opinion that gives you some sense as to whether your invention is patentable.

With Track I, you will fall off the track if you take even one day of an extension of time.  With PCT-PPH, you do not lose “special” status because of taking an extension of time.

With Track I, you will fall off the track if you file a Notice of Appeal.  The appeal will take some years to get decided.  With PCT-PPH, the “special” status is a gift that keeps on giving all through the appeal.  The Board is required to take up such a case before all other appeals.

With Track I, you fall off the track if you amend to include a thirty-first total claim or a fifth independent claim.  With PCT-PPH you do not lose “special” status by making such an amendment.

Suppose the case you would like to file has more than four independent claims or more than thirty total claims.  To get on Track I you will have to cancel claims.  With the PCT and PCT-PPH approach you would not necessarily have to cancel such claims.

How many clients are able to say, from the outset, that they are absolutely sure they will never be interested in foreign patent coverage?  Of those who say it, how many of them do you think know enough to be sure they are correct about this?  For the client that is not able to rule out, categorically, any interest in foreign patent coverage, the PCT approach permits deferring decisions and cost about such potential foreign patent coverage.

Those are some of the reasons why I recommend PCT-PPH over Track I.

(Updated May 6, 2014 in response to a question from an alert reader who pointed out correctly that I was mistaken about the effect of traversing a restriction requirement.)