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.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

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