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America Invents Act and Fast Track Patent Examination

Jan 18, 2013

WYOMING BUSINESS TIPS

 

A weekly look at business questions from the Wyoming Small Business Development Center (SBDC), Wyoming Market Research Center (MRC) and the Wyoming Procurement Technical Assistance Center (PTAC), a partnership of business assistance programs at the University of Wyoming.

 

Can you tell me more about the changes happening with patent applications?  Anne, Cheyenne.

 

I checked with Karen Kitchens, an intellectual property librarian to give us an update.  This week and next she is providing us some input into changes in the patent process.

 

Anya Petersen-Frey, MBA

Regional Director SE Wyoming

 

The America Invents Act and Fast Track Patent Examination

Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, karen.kitchens@wyo.gov

 

Fast tracking your U.S. patent application may be the right move for your small business.  Using traditional filing avenues, you can anticipate an average wait time of nearly three years until your patent’s final determination.  Such a long wait period may negatively affect the valuation of your business, as you do not have any incontrovertible rights while a patent application is pending.   Remember, the rights granted to patent holders include the rights to exclude others from making, using and selling your invention. These rights do not take effect until after the United States Patent and Trademark Office (USPTO) completes its examination of the patent application.

 

As of September 26, 2011, the USPTO began offering a Track I Prioritized Examination Program, as part of the America Invents Act (AIA).  This program gives inventors an opportunity to have their patent application reviewed within a reduced timeframe, for a fee.  To participate in the Track I program, the applicant must pay an additional fee to the USPTO on the same day the patent application is electronically filed.  For patent applications that have already been filed, the Track I fee must be paid upon or after the filing of a request for continued examination, but before the USPTO issues a first office action. For companies with less than 500 employees (considered a small entity), the Track I fee is $2,400.  This is a 50 percent discount on the $4800 fee for the fast track option. 

 

The AIA also created a new applicant status called micro-entity.  To qualify as a micro entity, an applicant must:

  • Qualifyas a small entity;
  • Have not been named as an inventor on more than 4 previously filed patent applications;
  • Did not, in the calendar year preceding the calendar year in which the applicable
    fee is paid, have a gross income exceeding 3 times the median household income;
    and
  • Have not assigned, granted, or conveyed (and is not under obligation to do so) a
    license or other ownership interest in the application concerned to an entity
    that, in the calendar year preceding the calendar year in which the applicable
    fee is paid, had a gross income exceeding 3 times the median household income.

 

A micro-entity is entitled to receive a 75% discount on fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.  The micro entity 75% discount will apply to fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.  Micro entity fees were included in the FY2013 fee schedule proposed in May 2012, the first fee setting by the USPTO under the authority granted by the AIA.  However, these fees might not actually be implemented until as late as March 2013.   A 17-month implementation timeline is located on the USPTO website here. 

 

Patent ownership is a critical factor that some venture capital companies consider when investing in entrepreneurs and small businesses who hope to grow their businesses. Therefore, prioritized patent examination may be a good investment for your small business.  

 

A Blog version of this article and an opportunity to post comments is available at http://www.wyomingentrepreneur.typepad.com/blog/.

 

 For more information about the services of Wyoming SBDC, MRC or PTAC, or to ask a question, please call 1-800-348-5194, e-mail wsbdc@uwyo.edu or write 1000 East University Avenue, Department 3922, Laramie, WY 82071-3922. Additional help is available on our website www.wyomingentrepreneur.biz.

 

The Wyoming SBDC, MRC and PTAC partnership program is funded in part through a cooperative agreement with the U.S. Small Business Administration. Additional support is provided by the Wyoming Business Council and the University of Wyoming.



Tags: patents

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