Maiorana Patent Law, PA

Is there a way to speed-up the U.S. Patent Office?

Chris: There are a couple of ways to speed things up at the U.S. Patent Office. When we talk about speeding things up, the most frustrating time for some clients is after we file a patent application but before the U.S. Patent Office responds with a First Office Action. We did another interview that defined a First Office Action which is a good to review, because at that point things are going to start happening at a faster rate with the Patent Office. But the initial time frame takes a while.

The U.S. Patent Office promises they'll have a First Action by 14 months after you file. If they take longer, then you get additional time on your Patent Term Adjustment. They hit that a fair amount of the time, but they go over a lot as well depending on the art unit you’re working in. So, a few ways to spend that time are a Track One Procedure and a “Petition to Make Special”.

Listen to the podcast.
Interview with Chris Maiorana by Steve Sleeper; recorded in 2017.

Can anyone file a petition?

Chris: Potentially they could, but there are criteria involved. One criterion is the inventor is elderly and wants to see this through in his or her lifetime. Patents don't take that long, but there is the age requirement criteria. Another is an environmental concern. If it's going to have a positive impact on the environment, you can file a petition and the U.S. Patent Office will grant special status.

What does special status mean?

Chris: This relates to the Patent Examiner's overall docket. The Patent Examiners have so many new cases they have to send First Office Actions. After we respond to an Office Action, the Patent Office gets back to us with either a Notice of Allowance or another Office Action. The second Office Action they send, that's on their special docket, which means they have to get through that before they do other things.

How fast is Track One?

Chris: Track One really is pretty fast. I know we filed a few of them at the end of last year and we got the Office Actions back in February and March. So, it was pretty quick.

What’s faster?

Chris: Track One is faster. The Petition to Make Special may not help if the art unit is still bogged down. The Track One goes ahead of that. We did do a Petition to Make Special for an inventor’s age and it came back ahead of the 14 month time frame. Actually it came back quicker than the inventor would like. When the funding came into play, they were marketing their invention, and suddenly they had more legal bills.

What’s cheaper?

Chris: Petition to Make Special. It's fairly easy for us to apply. We simply file the document and there's a nominal fee. Track One is expensive. There's a fairly hefty fee that goes with it in addition to the filing of the request for the Track One.

You can always ask one of our Affordable Patent Attorneys for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549.