United States: Four Years? Capture Your Competitive Advantage Now! - Obtaining A Patent Using USPTO's Prioritized Examination Process

Resource scarcity, high commodity prices, challenging environments, and regulations all drive R&D in the oil and gas industry. In 2012, the largest E&P companies and oilfield service companies combined to spend more than $16.1 billion on R&D, and a recent survey suggests that number may increase by more than 10% over the next two years.

Companies must protect their intellectual property developed from such R&D and the competitive advantage that it provides. Patents provide the primary means of protection, granting companies a vital period of market exclusivity. For start-ups, they help assure investors that the company will be able to profit from its innovations so that they can recoup their investments.

Certainly patent protection comes with costs. The USPTO's fees for filing and examination are normally about $1,600—higher if the application includes more than an allotted number of claims.  Additionally businesses have to be mindful of the added cost of attorneys' fees in preparing an application, which vary.

Far more costly, though, are the opportunity costs incurred during the multi-year process of obtaining a patent. The backlog of applications to examine at the United States Patent and Trademark Office (USPTO), while improving, still results in an average pendency of 30 months from filing the application to a final disposition – a notice of allowance or a final rejection –in the chemical and mechanical technology areas.  The pendency frequently stretches much longer for a given application.

Most everyone finds this delay frustrating, particularly when a company launches a successful product and competitors begin introducing their own potentially infringing versions.

Fortunately, Congress enacted the America Invents Act that granted the USPTO authority to establish a fairly simple fee-based procedure to expedite certain patent applications: Track One Prioritized Examination. The Track One process drastically decreases the time it takes to obtain a patent.

For example, this author filed two Track One applications in April 2014 for an entrepreneur that invented an innovative piece of oilfield equipment.  The author obtained a preliminary interview with the examiner within two months of filing the application.  The examiner, within a week of the interview, issued a notice of allowance in the first application and a first office action in the second application.  After a second phone interview and an amendment to the claims of the second application, the examiner entered a notice of allowance.  Both applications will be grant by November 2014, less than seven months from the filing date.  This result is not atypical; to date in 2014, the average period from filing to grant is less than six months in all technology areas. 

Track One Prioritized Examination does cost more, namely $4,140 in addition to the regular application fees. For many companies facing potentially infringing competitors or entrepreneurs seeking investors, however, the results justify the additional cost. In addition, companies and entrepreneurs that qualify as small entity or micro entity pay fees reduced by one-half and one-quarter, respectively.

There are other requirements. The application must include all necessary documents, including formal drawings and the inventors' signed declarations.  (If an inventor is not cooperative, or is not available to sign the inventor declaration form, an invention's owner may file a "substitute statement" to comply.) The application must be filed electronically and cannot contain more than 30 claims or more than four independent claims.  With minimal foresight, however, corporations and inventors may easily meet these requirements.

When a Track One application is filed, the USPTO first reviews the application to ensure that it meets all of the requirements and complies with other formalities, such as the length of the abstract. If not, the USPTO requires the applicant to correct any deficiencies. Once all is in order, the Office of Petitions sends a notification that the application has been granted Track One status.  The USPTO assigns the application to a Group Art Unit, whose director in turn assigns it to a specific patent Examiner.

Track One procedures require immediate examination rather than adding the application to the backlog of all other applications.  USPTO guidelines provide that the Examiner must issue an Office Action addressing the merits of the invention within four months of the application reaching his or her docket. Thereafter, prosecution follows normal procedures, with the applicant responding to the Office Action and the Examiner reconsidering the application based on that response.

However, if the applicant does not respond to any Office Action in three months, reaches an impasse with the Examiner and files an appeal, or files a Request for Continued Examination, the application loses Track One status.

Another benefit of Track One examination is that the applicant can request an Examiner's interview, in person or by telephone, before the Examiner issues a first Office Action. This allows an applicant to preview an Examiner's objections, learn what prior art he or she has found during the examination process, and address those issues in an expedited fashion.

Finally, applicants also should consider when during the year they file a Track 1 application.  The USPTO may suspend the program if more than 10,000 Track One applications are filed in its fiscal year.  Fortunately, the USPTO provides online the number of applications filed to date and no more than 6,900 applications have been filed in any of the three years since the USPTO enacted the program.

In sum, Track One examination provides a new process by which companies and entrepreneurs can quickly secure the competitive advantage that their R&D investments provide.  Selectively applying the Track One process and proactively minding the details may make the difference between a good result years in the future versus a great result this year.

Originally published in the November edition of Institute for Energy Law.

Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Drinker Biddle & Reath LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Drinker Biddle & Reath LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions