Challenges of Track One Patents for Startups: A Tale of Thanksgiving

USPTO's Prioritized Patent Examination Program, also known as Track One, is attractive for start-ups for rapidly building an issued patent portfolio, but there are non-obvious challenges for entrepreneurs who choose this IP strategy. Our latest startup, IQ, filed five Parent applications, two Continuations and a Divisional within the first 12 months and we quickly learned that it is not all roses and unicorns…

The first consequence that we failed to appreciate was that all of the costs of filing and prosecuting a patent application are incurred very quickly. The impact of concentrating the costs was reduced in our case because one Parent and its Continuation were allowed in the first office action, but the second underappreciated consequence was most pronounced in this first action allowance case: both the parent and continuation issued in less than a year after filing and before the product was even to market. It proved impossible to keep a continuation open while accessing market feedback.

For those with considerable experience with writing and prosecuting patent applications, the pace of activity for multiple Track One applications is truly mind-blowing and the attorney’s bills some in large and rapidly. We started filing Provisional applications near the end of the first year because our IP budget was completely blown and we could not afford to extend the lopsided concentration of our principal’s efforts indefinitely. (I was drowning in paperwork...)

I had never filed a Provisional before in my career, but with two more Track One Parent applications and a Divisional application pending, we had to slow the IP process so that other work could get done, like completing the Quality System and dealing with Regulatory Affairs and selling products. That was just over a year ago. The Quality System is World Class, primarily thanks to our hard-working staff (thanks, Jason, Na and Frank), we're cleared in the US and Canada and can see the light at the end of the tunnel with the EU and sales are healthy and accelerating (thanks to Dave and Josh and so many others). The Provisional applications are now converting to full applications and, yes, we are seeking Track One for most of them...but not all of them this time. The “Provisional Pause” strategy appears to have served quite well in paring the financial and intellectual resource stresses while allowing the company to concentrate on profitability for a while.

And thankfully our revenues have grown substantially during the Provisional Pause. Supporting the coming bloat in IP work and expense will not be a problem so long as we continue rational triage for applications as they continue to burst forth. And we are thankful for the continued flood of ideas as well. But most of all, I want to thank my old friend, Sankar, for sharing his fantastic IP attorney with me! And Thank you Jonathan; we could not have done it without you. (If you need superior IP counsel, give me a call for a referral. Or email me [email protected])

Happy Thanksgiving, everyone!