What it costs to get a US patent fast via Track I?

A long-standing member of the EFS-Web listserv (the listserv for US patent practitioners) wondered what to charge for a Track I request.  (Track I is the program in which the US applicant can get his or her application moved to the front of the line for examination merely by paying a fee.)  I figured I might as well post a series of blog pieces with a few thoughts about professional fees for the various programs by which an applicant can get a US patent fast.

Let’s start with Track I, since that is the program that this listserv member asked about.  There are three main areas of work for the practitioner in a Track I case:

• counseling the client so that the client fully appreciates the many limitations and requirements of Track I
• preparing and filing the Track I request
• babysitting the pending application thereafter so as to avoid running afoul of the many limitations and requirements of Track I

The middle step is strikingly easy.  You fill in an application number on Form PTO/AIA/424 and e-file it in a “no missing parts” patent application along with the necessary fee.  (The fee is $4140, or $2070 for a small entity or $1035 for a micro entity.)  The entire process is half a dozen mouse clicks and takes five minutes or less.  This might prompt a practitioner to think that the professional fee for a Track I case should be small or perhaps that it should be a “no charge” item.

Which is why I mention the first and third steps.  Let’s talk about the third step (the “babysitting” step).  If you are the practitioner that has just spent $4140 of the client’s money to get a case onto Track I, the last thing you would want is to screw up and cause the case to go “off the track”.  The reason being that you would then probably feel the need to reimburse the client for the $4140 fee, or maybe feel the need to pay for an RCE to get the case back onto the track (at a cost of $5340 or $5840).

How can you screw up and cause a case to go “off the track”?  One easy way to screw up is by taking a one-day extension of time.  Any purchase of an extension of time causes the application to fall off the track.

Other ways to screw up and cause a case to go off the track include:

• filing a Notice of Appeal
• adding a fifth independent claim
• adding a thirty-first total claim
• adding a multiple dependent claim
• filing an RCE

Turning to the first step.  This step includes:

• checking with the USPTO to see whether the limit of 10000 Track I requests per year has been met
• checking to see if the proposed Track-I filing is for a 371 case (an entry into the US national phase) in which case an RCE will have to be prepared and filed
• preparing a preliminary amendment to eliminate multiple dependent claims and total claims more than thirty and independent claims more than four
• counseling the client that the case will fall off the track if any of a wide range of events were to occur, including taking an extension of time
• checking to make sure there are no missing parts or other deficiencies in the application that would lead to dismissal of the Track I request

The babysitting of the pending Track-I case is onerous.  Suppose that an associate gets assigned to the case who was not aware of, or had not been reminded about, the Track I status.  It is easy to imagine that associate, with all good intentions, taking an extension of time of a day or two, to permit the client an opportunity to provide instructions at the last minute.  The case would then fall off the track, and the client might well expect the firm to pay the thousands of dollars in government fees required to get the case back onto the track.

Update:  Alert list member Mary M. Lee posed a question that made me realize my list of babysitting burdens was incomplete.  Yet another burden is that if a Track-I request has been filed, the practitioner must docket aggressively to keep a close eye on the USPTO.  First, it may require some prodding for USPTO to consider and grant the Track-I request.  Second, even after the Track-I request is granted, it may require some prodding for USPTO to assign an Examiner to the case.  Finally, the Examiner might or might not be aware that the case is a Track-I case, so it may be necessary to contact the Examiner to keep the case moving along.

What professional fee do you think would be appropriate for the work to make a case into a Track I case?  Please post a comment about this.  I spoke with a few practitioners and the average of their responses was about $500.