The document discusses the USPTO's Track One Prioritized Examination process, which allows patent applications to be expedited for an additional fee. It notes that the average time to obtain a patent through this process is less than six months. The author provides an example where they obtained notices of allowance for two clients' applications in under seven months. The process requires electronic filing and limits the number of claims and independent claims. It guarantees the application will be examined within four months if all requirements are met. The program allows applicants to secure patent protection faster and gain a competitive advantage.

1. Four Years? Capture Your Competitive Advantage Now! - Obtaining a Patent Using
USPTO's Prioritized Examination Process
Craig Buschmann, Brinks Gilson & Lione
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
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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.
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