​A common question we hear from clients is: “Now that I filed my trademark application, when will we receive the registration certificate?”
 
As an initial matter, filing a trademark application does not guarantee that you will obtain federal registration. The application has to go through a process in the USPTO that involves four basic stages: application, examination, publication, and registration. How long each of these stages lasts varies widely based upon several factors. Typically, the shortest amount of time you can expect the process to take is about 12-15 months.

Application (about 6 months)*
 
Trademark applications are filed electronically through the official USPTO website. The government filing fee is also paid on this site. It is important to note that this filing fee will not be refunded, even if you do not obtain a federal trademark registration.

Once your application is submitted, the USPTO will determine whether you have met the minimum filing requirements. If you have, your application will be assigned an application serial number and official filing date. After a period of about 6 months*, the application will then be assigned to a Trademark Examining Attorney.

* The USPTO experienced a significant backlog of filings in 2021 and has been working to reduce the time to assign a Trademark Examining Attorney. The 6-month estimate is accurate as of the post date for this blog. Current wait times are maintained on this dashboard at the USPTO. 

Examination (about 1-12 months)
 
The USPTO employs over 600 Examining Attorneys, who are lawyers with expertise in U.S. trademark law. An Examining Attorney will review the trademark application to determine whether it includes all of the required filing fees and complies with all applicable laws and rules. As part of this review, the Examining Attorney performs a search of pending and registered marks within the USPTO records, to determine whether there are any existing marks that may bar your registration.
 
The Examining Attorney will issue a letter (an “Office Action”) detailing the results of their review. Typical issues raised during examination include conflicting marks identified during the Examining Attorney's search, ineligibility for protection due to descriptiveness or genericness of the mark, issues with the description of goods or services, and issues with the specimens submitted as part of the application. The Office Action will set a 3-month deadline to respond.
 
You must respond to every issue raised in the Office Action in order to keep your application pending. If you do not file any response, your application will be abandoned, and your fees will not be refunded.
 
If you resolve all issues raised by the Examining Attorney, your application will be approved for publication. If your response does not overcome all of the Examining Attorney's objections, the USPTO will issue a final refusal. You can appeal this final refusal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal.
 
Publication (3-4 months)
 
Applications that are approved by the Examining Attorney move to the publication stage. During this stage, the details of the trademark application are published in the USPTO “Official Gazette,” an online, weekly publication on the USPTO website. Publication opens up a 30-day window during which any third party who objects to your registration may file either an opposition to registration or a request for an extension of time to oppose.
 
If no opposition is filed (or if an opposition is unsuccessful), your application will move to the registration stage. The publication stage can take approximately 3-4 months from the time you receive a Notice of Publication to the time you receive official notice of the next status of the application (if no oppositions or extensions to oppose are filed).
 
Registration
 
If your trademark is based on use in commerce, a foreign trademark registration, or an extension of protection of an international registration to the United States, the USPTO will now issue an electronic Certificate of Registration (the USPTO no longer issues paper certificates unless you submit a request for that format and pay an extra fee). Your Certificate of Registration includes specific information about how to maintain your trademark registration.

Factors that can Lengthen the Timeline

• Complexity of any Office Actions and Time Taken to Respond. If the Trademark Examining Attorney raises multiple grounds to refuse your application and/or you are not able to overcome all issues in a first response, the examination stage can take significantly longer. How long you take to respond to any Office Actions also impacts timing.

 

• Appeal. As noted above, you can appeal a final refusal to the TTAB. Appeal would significantly lengthen the time to obtain registration, involves a complex process, and will not be covered in detail in this overview.

 

• Opposition. Trademark oppositions are litigation-type proceedings within the USPTO, and they are held before the TTAB. During an opposition, your trademark application is suspended until a decision is reached on the grounds for opposition.

 

• Your trademark is not yet being used in connection with the sale of goods or services. If you file your trademark application before you have started selling goods/services in connection with the mark, you will need to prove you have started using your mark in commerce before the USPTO will issue a Certificate of Registration. This involves additional submissions (and time) to the general process outlined here.

 
Do you have questions about trademarks?  Feel free to contact us.  We help clients of all sizes, across industries, and based in many countries obtain and maintain their US trademark rights.

Legal Disclaimer: The information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney-client relationship. Although effort has been made to ensure that the answers are correct, Weaver Legal and Consulting LLC and the associated author cannot and do not offer any warranty, whether express or implied, that the answers contained are accurate statements of law. This document is provided for informational purposes only. You should not act upon any information without first seeking advice from a qualified attorney outside the context of this article. 

     Brand owners who are interested in seeking U.S. trademark protection may want to get their applications on file at the United States Patent and Trademark Office (USPTO) before mid-January 2025 to avoid new and/or increased fees.

     In mid-November, the USPTO published a Final Rule that implements significant fee increases for trademark owners in 2025.  The Final Rule sets or adjusts 28 trademark fees and adds 7 new fees.  This blog will discuss the fees as they relate to electronic U.S. trademark application filing only.[1]

     Before diving into the details, a little background and alphabet soup is helpful.  Trademark applicants currently have two filing options via the Trademark Electronic Application System (TEAS):  TEAS Plus and TEAS Standard.  TEAS Plus is the lowest-cost filing option currently provided ($250 per class), but it comes with more stringent initial filing requirements.  Fees for TEAS Standard applications ($350 per class) are higher than those for TEAS Plus because they offer applicants more options during filing, including the option to enter free-form text descriptions of goods and services covered by the trademark.

The New Base Application

     Beginning 18 January 2025, the USPTO will eliminate the current TEAS Plus and TEAS Standard trademark applications and replace them with a single electronic application filing option (a “base application”) that has a filing fee of $350 per class.  In order to qualify for this base application filing fee, however, the application must meet two criteria:  it must meet standards relating to the description of goods/services to be covered, and it must be considered “complete.”  Failure to meet the requirements in these two areas will result in new surcharges created in this Final Rule.

Description of Goods/Services

     To qualify for the base application filing fee of $350 per class, the trademark application must select pre-approved USPTO ID Manual entries for goods and services from a pick-list.  The pick-list is visible once the trademark applicant types in keywords for their goods/services.

     If the trademark owner’s desired goods/services are not listed in the ID Manual, they have a couple of options.  First, they can customize their description of goods/services by entering free-form text in the application.  However, if they do so, the USPTO will assess the following new surcharges per class:

• To enter free-form text descriptions of goods/services, applicants will pay a surcharge of $200 per class
• If any free-form text description of goods/services exceeds 1,000 characters, applicant will pay a surcharge of $200 per class for each additional group of 1,000 characters (spaces and punctuation count against this number!)

     The second option available to trademark owners is to submit a formal request to add a new goods/services description to the ID Manual.  The USPTO implies that this process will take a couple of weeks; however, applicants should assume the process may take longer, and there is no guarantee the Office will adopt a new entry.

Complete Application

     Another new surcharge of $100 per class can be applied to new applications starting in January if the USPTO determines that the application is filed with insufficient information.  Generally speaking, the requirements for a base application are the same as the current requirements for a TEAS Plus application.  Some requirements to note here that may trigger a surcharge for filing with insufficient information include[2]: 

• A verified statement dated and signed by a person properly authorized to sign on behalf of the owner;
• For marks that include color, a statement naming the colors and describing where the colors appear in the mark, and a claim that the colors are a feature of the mark;
• For marks that are not in standard characters, a description of the mark;
• An English translation of any non-English wording;
• A transliteration of any non-Latin characters included in the mark;
• For marks that include an individual’s name or likeness, either a statement that identifies that individual and comprises written consent of the individual, or a statement that the name or likeness does not identify a living individual;
• If applicant owns one or more registrations for the same mark, and the owners last listed in Office records of the prior registrations for the same mark differs from the owners listed in the application, a claim of ownership to the registrations identified by the registration numbers.

     It should be noted that all of these fees are assessed per class; as a result, fees and surcharges may increase substantially in multi-class applications. 

     There is some ambiguity around how the USPTO will apply the surcharges.  According to the USPTO, the electronic application system will clearly indicate the fields required to avoid the incomplete information surcharge, and there will be no surcharge for IDs selected from the ID Manual within the application.  During the drafting process (and before hitting the “submit” button), the applicant should see a final calculation of all surcharges assessed, along with information required to avoid them.

Implications for Brand Owners

     Given the above surcharge structure, it will be imperative that trademark owners carefully discuss their application with their attorney prior to filing.  In line with trademark offices around the world, the USPTO is clearly encouraging applicants to adopt their pre-approved goods/services descriptions from the ID Manual.  However, for industries where this may not be feasible (for example, emerging or rapidly changing technologies), brand owners may opt for the additional surcharge to preserve their trademark rights.  For trademark owners based outside of the United States, these surcharges will require upfront strategy to minimize the added cost.

     Do you have questions about trademarks?  Feel free to contact us.  We help clients of all sizes, across industries, and based in many countries obtain and maintain their U.S. trademark rights.

​     Legal Disclaimer:  The information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney-client relationship.  Although effort has been made to ensure that the answers are correct, Weaver Legal and Consulting LLC and the associated author(s) cannot and do not offer any warranty, whether express or implied, that the answers contained are accurate statements of law.  This document is provided for informational purposes only.  You should not act upon any information without first seeking advice from a qualified attorney outside the context of this article. 


[1] Fees relating to paper filing options, international registration applications (under the Madrid System), registration renewals, and Letter of Protest filings are not addressed here.

[2] This list is not comprehensive.  A full listing can be found in the Final Rule noted above.

     The process of creating a new brand is exciting.  Maybe the word or phrase immediately jumped to mind as the perfect way to identify your product or service.  Or maybe you spent hours brainstorming to find just the right word or phrase to embody your brand.  Now you are ready to launch, right? 
     “Hold on,” your attorney tells you, “we should do some trademark searching first.”  What is a trademark search, and why should you do it?
     A trademark search is the process of gathering and evaluating information to assess two different aspects of a trademark: 

1. its availability for your adoption and use without risk of infringing someone else’s rights (your right to use it), and
2. its protectability under trademark laws (your right to prevent others from using it).

Trademark searching can also illuminate other aspects or trends surrounding a particular term or phrase, which can be useful in refining your branding strategy.

Availability
     Trademark searching is important to see whether your proposed mark might infringe someone else’s rights.  If the search uncovers a company that already uses or has a registration for that trademark, you can avoid potential lawsuits by choosing a different trademark before you hit the market.  Searching can also illuminate a trademark owner’s policing strategy.  If a company consistently enforces their trademark rights by opposing registration of similar marks and/or filing lawsuits to stop others from using confusingly similar marks, this can be a clear signal that you should avoid adopting a trademark that could be considered similar to theirs.

Protectability
     Trademark searching can provide valuable information regarding whether your mark may be protectable through registration in your jurisdiction.  A U.S. federal trademark registration gives you the ability to prevent others from using marks that are confusingly similar to your mark and is thus a valuable tool to protect your brand name.
     Trademark searching can uncover trends within the U.S. Patent and Trademark Office (USPTO) that may impact whether your proposed trademark might be registrable.  For example, if the USPTO is refusing registration of similar marks based on a common theme (for example, because it has concluded that a term is merely descriptive and therefore not eligible for registration), you can expect a similar approach may be taken in your case.  If trademark registration is important to you, then you can use this information to refine your mark.
     By conducting trademark searches, you can, in the long run, avoid investing in building brand identity in a trademark that is later objected to by another party, or refused registration by the USPTO.

How are trademark searches conducted?
     If you type “trademark search” into an Internet search engine, you will find several companies that offer trademark searching services.  However, here are two important things to remember:

• Not all searching is equal, and
• The devil is in the details.

     Trademark searches should be tailored to your specific needs as a business owner.  Beware of a one-size-fits-all approach to searching.  Typically, a trademark search begins with a review of the trademarks recorded in the register of the jurisdiction at issue (such as the USPTO).  Other possible parameters for a trademark search include:

• State trademark registers (which can be maintained by the Secretary of State or similar entity within each state);
• Any foreign countries in which you might sell products or services in connection with the mark;
• Phonetic equivalents and/or plural versions of your mark;
• The goods or services with which you will use the mark; and
• The International Class that envelopes those goods/services (your attorney will determine this).

     In many countries, trademark rights are established by the first party to use a mark commercially, regardless of whether the mark is registered.  These are referred to as “common law” trademark rights.  Therefore, searching may include looking for such common law rights, which can be found on the Internet, in published articles, as part of business names, and the like.  Trademark searches that include this level of detail are often referred to as “comprehensive” or “full availability” searches.
   Typically, searching can be done in two stages.  The first stage can be referred to as a “knock-out” search, and it often involves searching trademark registers for identical (or near identical) marks.  If a mark passes the “knock-out” stage, a more comprehensive trademark search can take a deeper dive to determine whether there are potential issues with your use and/or registration of the mark.

Where to start?
     While you can do some initial investigating to determine whether others are using a particular brand name, it is important to hire a trademark attorney to conduct your trademark searching and clearance.  An experienced trademark attorney can conduct a search that meets your needs and analyze the results for you.

   The following information is important to provide to your trademark attorney:

• A listing of 3-5 proposed trademarks (this will assist with the knock-out phase of searching);
• A complete description of the goods and/or services you will use in connection with the mark (include those you will use within the next 1-2 years);
• A description of any meaning behind the trademark;
• Whether the mark includes any design feature (a logo), stylized fonts, or a combination of these.

     This information will assist your attorney in conducting an efficient and thorough trademark search.  If you have any budgetary constraints, let your attorney know that too.  Typically, the more comprehensive the search, the more expensive it will be.  Similarly, if you want your attorney to review the results in detail, this will involve more time and expense.
     While it can be tempting to jump right in with a new trademark and begin using it with your product or service, it is important to vet that trademark before you adopt it.  It is much more difficult to change the brand name after product launch than to spend some time upfront to make sure the trademark is clear for your adoption, use and/or registration.
     Still have questions about trademarks?  See some of  my other trademark blogs or feel free to contact me.

The U.S. Patent and Trademark Office continues to provide tools and resources to inventors who have developed technology relating to COVID-19.  On May 8th, the USPTO announced a prioritized examination pilot program for small and micro entities that file COVID-19 related patent applications.  The pilot program allows qualifying applications to be taken out of turn for examination, without requiring the significant Track One fees.  See my prior blog post regarding information about this program.

Today, the USPTO announced it has established a webpage with important information regarding the pilot program, including the new Certification and Request for COVID-19 Prioritized Examination form, PTO/SB/450.

The pilot program will initially run until the Office has accepted 500 requests.  After 500 requests have been accepted, the USPTO may extend the pilot program (with or without modifications) or terminate it, depending on the workload and resources needed to administer the program, feedback from the public, and the effectiveness of the program.

The USPTO webpage also includes guidance for filing the request to participate in the pilot program, as well as answers to common questions.  This pilot program offers an excellent opportunity for small and micro entities to take advantage of accelerated examination, while exempting those inventors from the prioritized exam fees.

Please feel free to contact me if you have questions or are interested in learning more about this new pilot program.

Today the USPTO announced a pilot program that will grant requests for prioritized examination to applicants that qualify for small or micro entity status without payment of the typical fees due for this accelerated examination track.

This is a great opportunity for independent inventors and small businesses to accelerate the examination process of their patent applications without the high fees typically associated with the prioritized examination (Track One) process.  Those fees can typically be in the range of $1,000 to $2,000 for small and micro entities.

The pilot program will accept a total of 500 requests under this initial phase.  After that point, the USPTO may decide to extend the pilot program, may modify the program, or may terminate it.

To qualify for the pilot program, the following conditions must be met:

1. The applicant must qualify for small or micro entity status;
2. The patent application must include at least one pending claim covers a product or process related to COVID-19 that is subject to FDA approval for use in the prevention and/or treatment of COVID-19
3. The application must be a nonprovisional utility or plant patent application;
4. The application cannot claim priority to multiple nonprovisional or international applications; and
5. The application cannot include more than 4 independent claims and 30 total claims (with no multiple dependent claims).

The objective of the pilot program is to complete, on average, the examination of an application within 12 months of special status being granted.  The press release can be found here.

The Federal Register Notice recommends practitioners use Form PTO/SB/450 to make the request for prioritized examination under the pilot program.  Once that form is available, I will update the link in this article.

Please feel free to contact me if you have questions or are interested in learning more about this new pilot program.

​On March 31st, the United States Patent Office (USPTO) issued a Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security (CARES) Act.  This waiver extends the time to file certain patent-related documents or fees which otherwise would have been due on and between March 27, 2020 and April 30, 2020.

Deadlines and Fees Impacted

The waiver applies only to the following:

1. For small or micro entities only, a reply to an Office notice issued during pre-examination processing;
2. Reply to an Office notice or action issued during examination or patent publication processing;
3. Issue fee;
4. Specific appeal documents and submissions to the Patent Trial and Appeal Board (PTAB); or
5. For small or micro entities only, maintenance fees.

Note the waiver does not apply to PCT or national stage filings, the deadline for filing a non-provisional application that claims priority to a provisional, or inter partes review petitions.

The above due dates will be extended 30 days from the initial date the filing was due, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Qualification

A delay in filing or payment may qualify for the extension if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

USPTO Remains Open for Filing

On March 16, the USPTO closed to the public until further notice.  All Examiner interviews must be conducted remotely via phone or video.  However, the Office is open for the filing of patent documents and fees through such means as the USPTO electronic filing system (EFS-Web), United States Postal Service by Priority Mail Express® or with a certificate of mailing, by hand delivery to the Customer Service Window, and facsimile transmission.

The full Notice can be found here.

     Starting a new nonprofit organization is exciting.  It can also be daunting, as you may wonder where to begin and how to find the right resources.  It is important to set up your nonprofit organization correctly from the start, so you can avoid unnecessary delays and extra paperwork.

     Here are key steps for starting your organization off on the right foot.
 
Step #1  Choose a name for your nonprofit.

    At the very start, choose a name for your organization that reflects the intent and aspirations of your new nonprofit.  Have an attorney verify that your name is available for you to adopt and use.  You do not want to have to change your name because you find out later that someone else is already using it.
 
Step #2  Incorporate your organization.

     In order to create your nonprofit as an entity, you need to incorporate it.  This is accomplished by filing Articles of Incorporation with your state.

     Many states provide an online option for incorporating your organization, and it can be tempting to use this option for its apparent efficiency.  However, typical online forms do not include the required language for a nonprofit to qualify as a tax-exempt organization under Section 501(c)(3) of the Internal Revenue Code.  Therefore, it is best to not use the online form, but instead seek an attorney who specializes in nonprofit organizations to help you.

     The information you will need for incorporation includes:

• Name of the organization
• Mailing address of the corporation (consider opening a PO box)
• At least 3 directors (president, treasurer, and director or officer)
• Full mailing address of each director
• Fiscal year (calendar year or other – this should be set based on the flow of funds)
• Purpose/mission statement

     There is a nominal filing fee charged by the state to record your Articles of Incorporation.
 
 Step #3  Obtain an Employer Identification Number (EIN).

     Your organization’s EIN is its social security number – it is the number that identifies your organization for all government filings.  You obtain your EIN through the IRS website:

https://www.irs.gov/businesses/small-businesses-self-employed/apply-for-an-employer-identification-number-ein-online

     The form must be completed by a person who controls, manages or directs the organization (i.e., the president).  Upon completing the online form, you receive your EIN immediately.  There is no charge for obtaining an EIN.
 
Step #4  Open a bank account in the name of your charitable organization.

     Once you have your EIN, you should open a bank account in the name of your charitable organization.  Keep records of the seed money used to open the account; if this is a loan to the organization, you will need to keep track of that fact and when it is repaid.  If the seed money is composed of donations, track the source of those donations.
 
Step #5  File Form 1023-EZ, “Streamlined Application for Recognition of Exemption Under Section 501(c)(3) of the Internal Revenue Code.”

     Have an attorney help you fill out the 1023-EZ, which is the application for recognition of exemption under 501(c)(3).  This form is submitted online directly to the IRS and requires a $275 filing fee. 

     If approved, the IRS will send you a Determination Letter with important information for your organization.  Typically, you receive your Determination Letter within 2-4 weeks.  The Determination Letter is a critical document for your organization – keep it with your core documents, as donors may ask to see a copy of it.

Step #6  Draft Bylaws.

     Bylaws are an internal document that sets out the day-to-day operation of your organization.  You can begin with simple bylaws that specify key facets of your organization, such as:

• The name of your organization and any trade names you may use;
• Whether your organization will have members who would vote on operation of the organization;
• The registered office of your organization;
• Your fiscal year;
• Basic structure of your board of directors;
• How often your organization will have meetings; and
• How to amend the bylaws as your organization grows and develops.

     Your bylaws are not recorded with the state, but you should keep them with the other key organizational documents for your nonprofit.

Step #7  Apply for Charitable Organization credentials with any state(s) within which you solicit donations.

     Each state regulates charities that solicit donations within their borders, and each state sets its own threshold for registering.  The trigger here is where your donations originate.  For example, if you have donors in Minnesota and Wisconsin, you will likely have to register in both states.  Keep good records, and register in the required states.

     The filing fee for state registration is typically nominal.
 
Step #8  Create an internal calendar system to track annual filing requirements with the IRS and state(s).

     Congratulations!  After completing the above steps, your organization is recognized at the federal and state levels as a nonprofit, charitable organization.  Each of these registrations will have ongoing, annual filing requirements in order to keep your registration.  It is critical that you create an internal calendar system to track these requirements. 

     The IRS has many helpful tools at:  https://www.irs.gov/charities-and-nonprofits

     Your registration states will also have useful resources at their respective website.
 
2 Optional Steps…

Customize your listing on GuideStar.

     Once you receive 501(c)(3) status, you will be automatically included in an online listing of over 2.7 million nonprofit organizations, run by GuideStar:  https://www.guidestar.org/

     GuideStar provides an online presence for your organization, and as much information as you would like to share on the platform.  It also provides certification levels, as an indication of your transparency and is a useful marketing and fundraising tool.  You can include a link to your website and “donate” button right on the GuideStar listing.
 
Obtain a Certificate of Exempt Status (CES), which allows you to avoid paying sales tax on purchases for the nonprofit organization.

     If you will be making substantial purchases within a particular state, you may want to apply for a CES.  You would present the CES to a vendor to avoid paying sales tax on purchases from that vendor.  The application for a CES is typically done on the state department of revenue website.  There is no filing fee.

   These steps can help make the process of creating your nonprofit organization a streamlined, enjoyable process.  The key is staying organized and finding the right resources.

Intellectual property (IP) is woven into the fabric of a business.  Whether protectable via patent, trademark, trade secret or copyright, this property can be a valuable asset when properly maintained.

IP rights can be created before a business is formed.  For example, advances in technology can give rise to patentable inventions, and company names and/or brand names can give rise to trademark rights.  As a business develops and grows, these IP rights may grow and develop along with the business. 

It is critical to properly identify IP as it is created, and take continuous steps to protect the rights that arise with it.  Failure to do so can compromise your rights.  Many large companies have mechanisms in place to continuously monitor and secure IP rights.  However, for many medium- and small-sized companies, and particularly start-ups, this task can seem daunting.

In my practice, I have often observed companies of various sizes overlook IP ownership records – both for their own intellectual property, and for property they purchase from others.  This has the potential to create complications for the IP portfolio, or in the case of trademarks, could even destroy rights. 

Here are 5 important steps your company can take today to maintain clear IP ownership records and maximize value:

1.     Periodically review your business to identify patent, trademark, know how, and/or copyright that is valuable to your company.  Depending upon your business, this review can take place at regular intervals to allow you to identify intellectual property before it becomes public.  Decide how you want to protect that IP, keeping in mind that a combination of patent, trademark, copyright and/or trade secret may provide the best protection.
 
2.  Obtain assignments promptly when IP is created.  Employment contracts should include a clause obligating the employee to assign any IP created during their employment with the company.  Under this umbrella obligation, there are certain triggers that should cause you to review ownership records for innovations: 

• Patent application filing.  Each time a patent application is filed, obtain assignments from all inventors when filing the case.
• Employee leaves the company.  When an employee leaves the company, obtain assignments of any invention disclosures (unfiled patent applications) they have prepared.  This can be done as part of an exit interview process, so that you obtain all signatures before they have left the building.  You might need to follow up later with additional documents, but having the assignment of invention disclosure gives you a back-up document in case they are inaccessible.
• Outside collaboration.  Be wary of collaboration with outside parties that may give rise to joint inventorship.  Before any such collaboration, address ownership of IP and obtain assignment if possible.
• Founding members.  When considering IP ownership, do not overlook any creative activity of company founders.  Start-up companies often include entrepreneurs who file the original IP in their own name; this IP should be assigned to the company once the corporate entity is formed.

 
3.     When a business transaction occurs that may impact IP, do your due diligence to identify all IP impacted in the transaction.  Take stock of all IP, including patents, patent applications, statutory invention registrations, trademarks (or service marks), trademark/service mark applications, copyright, trade secret and know how.  Determine the scope of rights to be conveyed in the transaction, in terms of technology, geographic scope, market, and the like.  Will this be a license or assignment?  It is important to have intellectual property counsel assist you with the IP aspect of larger business transactions; your IP counsel can work with your business attorney so that IP aspects are adequately addressed in your overall agreement.
 
4.     When a business transaction includes IP agreements (such as patent or trademark assignments), include those IP agreements as schedules, and have those IP agreements executed concurrently with the main business transaction.  A separate schedule for each IP agreement is ideal, for reasons noted below.  Executing all relevant agreements involved in an asset purchase (or other business agreement) at one time makes the entire process much more efficient, since the parties are at the table and executing the overall business transaction.  If the IP agreements are put off until later, it may be more difficult to track down the required parties.
 
5.    Record any IP assignments promptly with the relevant IP Offices.  It is important to file assignment documents in the USPTO, U.S. Copyright Office, and other IP registries to maintain updated chain of title for all IP assets.  The requirements of IP registries for recording assignment documents vary across jurisdictions, so you may need to coordinate with local counsel in each applicable jurisdiction to ensure the assignment documents comply with all formalities.  For example, if the IP portfolio includes rights in foreign countries, you may need to engage counsel in each of those countries to assist with recording ownership rights.  Once an assignment has been recorded in the USPTO, the records become public.  Because of the public nature of assignment recordation, and the requirements unique to patent versus trademark assignments, I prefer to keep each agreement as a separate schedule.  Recordation is a simple procedure, and it creates a public record that clarifies chain of title to the property.
 
Careful monitoring of intellectual property rights and ownership records can help you maximize these important business assets.  These 5 steps can be a good start.

As any inventor knows, obtaining a patent can be a long process. 

According to the U.S. Patent Office (USPTO) FY 2018 Performance and Accountability Report, the average time from the date an application is filed until it receives an initial patentability determination from the patent examiner is 15.8 months.  On average, it takes almost 2 years (23.8 months) to reach a final disposition of your patent application – either allowance or abandonment.  Actual times vary depending upon the art unit to which your application is assigned, and the nature of your technology.

The USPTO continues to have a hefty backlog of unexamined patent applications – 522,149 at the end of FY 2018.

Given this overwhelming caseload within the USPTO, it is understandable that examination can be a lengthy ordeal.  However, in some cases, you may want your patent to issue quickly for business reasons.

This article highlights 5 tools you can use to accelerate examination of your patent application.  Each tool comes with special considerations.

1.     General interview practice

One method I routinely employ to streamline examination is to request interviews with Examiners assigned to my clients’ cases.  When I began practice in the 1990s, this interview practice was done in-person or via phone.  These days, it is most common to conduct interviews via phone or teleconference. 

Oftentimes, speaking with the Examiner to explore their objections can reveal pathways to allowance of a patent.  This is the most cost-effective and efficient manner to expedite any patent case.  The Patent Office does not charge any fee for interviewing a patent examiner.
 
2.     Patent Prosecution Highway (PPH)

Another cost-effective way to speed up issuance of a patent through the USPTO is to use the Patent Prosecution Highway (PPH).  This tool is available if you have corresponding patent applications filed in countries outside the U.S.

Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the patent owner may request fast track examination of corresponding claims in a corresponding patent application that is pending in a second patent office.  In other words, if the European Patent Office allows your application in Europe, you can inform the USPTO about the allowance and ask the Office to fast track your U.S. case in light of the allowed European case.

There is no fee to request participation in the PPH program.  At the time of this writing there are well over 30 PPH participating offices, including the EPO, Canada, Australia, China, Germany, Japan, the UK, and New Zealand.

One consideration for this program is that you need to certify that the claims in your U.S. application sufficiently correspond to the patentable/allowable claims from the other patent office.  Therefore, you need to be satisfied with the claim scope you obtained in the first patent office.  If you want to pursue different claim scope, do not use this option.
 
3.     Track I – Prioritized Examination - $$

Prioritized Examination (PE) is a procedure whereby you pay additional fees to move your case up in line for examination.  The USPTO will only grant 10,000 requests for PE within each fiscal year.  To find out if this limit has been reached in the current year, and/or to see current program statistics, see the Patents Dashboard.

For your application to be eligible for PE, it must include no more than 4 independent claims, 30 total claims, and no multiple dependent claims.  If your case is a national stage entry, you will have to file a by-pass continuation application under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365 (national stage filings are not eligible per se).

The Track I filing fees are $4,140, on top of the regular USPTO Patent Application filing fees due (Basic Filing Fee, Search Fee and Examination Fee).  Small and micro entity fee reductions are available.

If your application is accepted into the Track I program, the USPTO’s goal is to provide a final disposition within 12 months of prioritized status being granted.
 
4.     Petition for Accelerated Exam – Additional filing requirements

The Accelerated Examination (AE) program also aims to complete examination of an application within 12 months from the filing date of the application.  Unlike the Track I option, however, this tool requires significant extra paperwork and case preparation.

The most important feature of this option is the requirement that the patent applicant conduct a preexamination search of U.S. patents and patent application publications, foreign patent documents, and non-patent literature.  In addition, you must provide an accelerated examination support document that includes:

• An IDS citing each reference deemed most closely related to the subject matter of each of the claims;
• For each reference, you must identify all the limitations in the claims that are disclosed by the reference;
• A detailed explanation of how each of the claims is patentable over the references;
• A concise statement of utility of the invention as defined in each of the independent claims; and
• Identification of where each claim limitation finds support within the application.

​
There are several additional requirements regarding the documents that must be filed, and the amount and structure of claims for eligible applications.
Thus, while this option does not include the additional filing fees required under Track I, the amount of time you will need to invest to prepare the required filing materials may meet or exceed the Track I filing fees.
 
5.     Petition to Make Special – Circumstances

This tool is available for patent applications within special circumstances, namely:

• The applicant is of advanced age (65 or older), or in poor health; or
• The invention will materially enhance the quality of the environment, contribute to the development or conservation of energy resources, or contribute to countering terrorism.

There is no additional fee for Petitions to Make Special, but you must prove the circumstances that form the basis for the petition.  For instance:

• Examples of inventions that materially contribute to the discovery or development of energy resources include developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. 
• Examples of inventions that materially contribute to more efficient utilization and conservation of energy resources include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc.

 
These 5 tools may help you advance your patent application more quickly through the Patent Office.  If your application is accepted into one of the programs, you may need to meet additional ongoing requirements during prosecution.

The above information is fairly general in nature, and specific additional requirements may apply in your case.  Consult with a registered patent attorney for more information about your individual case, and which tool(s) may be best for you.

It is important to thoroughly review the Patent Term Adjustment (PTA) calculation when your U.S. patent issues.  This was illustrated in the Federal Circuit Court of Appeals decision yesterday in Supernus Pharmaceuticals, Inc. v. Andrei Iancu (January 23, 2019).


​Patent Term Adjustment (“PTA”)

The term of a patent is 20 years from the earliest U.S. filing date.  Because the term includes the period during which the application is pending before the PTO, the Patent Office has the authority to adjust the term of a patent by adding days to account for prosecution delays caused by the Office.  Such adjustments are favorable to the patentee because they extend the life of the patent.  Correspondingly, the PTO can reduce the PTA in order to account for delays caused by the applicant.

Before delving into the details, the basic gist of the Supernus case involved a supplemental filing by a patent applicant, and the impact that filing had on the PTA when the patent ultimately issued.  The supplemental filing was made to disclose information from a foreign counterpart application.  By its nature, this information was unknown to the patent applicant (and indeed did not even exist) for a significant amount of time during pendency of the U.S. application.  When calculating “applicant delays” to reduce PTA for the U.S. patent, the PTO counted the time from the date an RCE was filed by the applicant (which preceded the foreign action by 546 days), to the date the patent applicant disclosed it to the USPTO.

This case discusses some fundamental questions relating to PTA:  what counts as delay on the part of applicant, and how does the PTO calculate that delay?

For each patent, the PTA determination is stated on the Issue Notification Letter.  It is important to review that determination, and raise any objections, promptly.

Supernus v. Iancu

The case involved U.S. Patent No. 8,747,897, titled “Osmotic Drug Delivery System.”  Supernus filed the application on April 27, 2006, followed by lengthy prosecution that included an RCE filed in February 2011, and ended with the ‘897 patent issuing on June 10, 2014. 

As is often the case, Supernus had a parallel European patent application pending.  In that European case, a third party filed a Notice of Opposition on August 21, 2012.  European counsel notified Supernus of the Opposition 21 days later, on September 11, 2012.   On November 29, Supernus filed a supplemental Information Disclosure to disclose the Opposition and cited references to the USPTO.

Relevant dates are shown here:

In calculating term adjustment for the patent, the PTO reduced the PTA by 886 days for applicant delay.  Supernus objected to 646 days that were assessed for the period between the February 22, 2011 RCE filing and the November 29, 2012 submission of the supplemental IDS.  Thus, the entire period between the filing of the RCE and the supplemental IDS was counted as “applicant delay” against the PTA for this patent, despite the fact that the opposition did not even exist until August 2012.

Supernus filed a request for reconsideration of the PTA, which the USPTO rejected.  Supernus then appealed to the U.S. District Court for the Eastern District of Virginia, which ruled in favor of the PTO.  The case was then appealed to the Federal Circuit.

Supernus argued, and the PTO did not dispute, that Supernus could not have undertaken any efforts to conclude prosecution of the patent application during the 546-day period between the filing of the RCE on February 22, 2011, and the EPO’s notification of the European Opposition on August 21, 2012.  The Federal Circuit stated the precise question before it was “whether the USPTO may reduce PTA by a period that exceeds the ‘time during which the applicant failed to engage in reasonable efforts to conclude prosecution.’”  The Federal Circuit reversed the district court and agreed with Supernus.

The Federal Circuit held:

“On the basis of the plain language of the statute, we hold that the USPTO may not count as applicant delay a period of time during which there was no action that the applicant could take to conclude prosecution of the patent.  Doing so would exceed the time during which the applicant failed to engage in reasonable efforts.”

The Federal Circuit found the PTA statute imposed two limitations on the amount of time that the USPTO can use as “applicant delay” for purposes of reducing PTA:

• First, the statute expressly requires that any reduction to PTA be equal to the period of time during which an applicant fails to engage in reasonable efforts. 
• Second, the statute expressly ties reduction of the PTA to the specific time period during which the applicant failed to engage in reasonable efforts.

 Thus, the statutory period of PTA reduction must be the same number of days as the period from the beginning to the end of the applicant’s failure to engage in reasonable efforts to conclude prosecution.  In the Supernus case, there was no action Supernus could have taken to advance prosecution of the patent during the 546-day period, particularly because the EPO notice of opposition did not yet exist.

When reviewing PTA for your patent, it is important to confirm any reduction to the PTA is in fact equal to any period of time in which applicant has failed to engage in reasonable efforts to conclude prosecution.  Particularly when your application involves foreign counterparts, any reduction should correlate to the specific time period during which applicant failed to engage in reasonable efforts to prosecute the application.  Finally, although this case involved post-RCE filings, the principles of this case can apply to any supplemental IDS.