The First Offer Accepted: First-Action Allowances and the Track 1 Premium

by Dennis Crouch

A first action allowance comes with both excitement and some fear. For the client it means a faster patent at lower cost, and for the attorney it looks like a clean win. And yet, in my own years of practice, a first action allowance always left me with a feeling that I had somehow underbid. It is that same sensation having your opening bid in a immediately accepted by the other side, before any negotiation has begun. You get the deal, but you also walk away wondering how much more you might have asked for. In that spot I believe I always counseled the client to file a continuation and find out whether the examiner had left something on the table.

For this post I look at first actions over the past couple of decades — measuring two things: how long applicants waited for the first action, and how often the first action was a Notice of Allowance rather than a rejection. The share of first action allowances fell from about 17% in early 2004 to roughly 7% during 2008 and 2009, then recovered slowly to 15% range by the late 2010s, where it sits today. The pattern I find more interesting involves prioritized examination. Track 1 applications, which pay an extra fee for expedited treatment, draw a first-action allowance 17% to 20% of the time, several points above the ordinary-track rate. The two lines crossed for good around 2014, and Track 1 has stayed higher ever since.