20141105_energy-law-advisor-nov-2014_track-1_article

Four Years? Capture Your Competitive Advantage Now! - Obtaining a Patent Using USPTO's Prioritized Examination ProcessCraig 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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20141105_energy-law-advisor-nov-2014_track-1_article