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January 28, 2013 — A weekly look at Wyoming business questions from the Wyoming Small Business Development Center (WSBDC), part of WyomingEntrepreneur.Biz, a collection of business assistance programs at the University of Wyoming.
By Anya Petersen-Frey, WSBDC southeast regional director
“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 on the America Invents Act and Fast Track Patent Examination.
Fast tracking your U.S. patent application may be the right move for a small business. Using traditional filing avenues, anticipate an average wait time of nearly three years until the patent’s final determination.
Such a long wait period may negatively affect the valuation of a business because 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 an invention. These rights do not take effect until after the U.S. Patent and Trademark Office (USPTO) completes its examination of the patent application.
As of September 2011, the USPTO began offering a Track I Prioritized Examination Program as part of the America Invents Act (AIA). The 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, which is a 50 percent discount on the $4,800 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 be a small entity and have not been named as an inventor on more than four previously filed patent applications.
A micro-entity is entitled to receive a 75 percent discount on fees for filing, searching, examining, issuing, appealing and maintaining patent applications and patents. The discount will apply to fees for filing, searching, examining, issuing, appealing and maintaining patent applications and patents.
Micro-entity fees were included in the 2013 fee schedule proposed last May, the first fee setting by the USPTO under the authority granted by the AIA. However, the fees might not actually be implemented until as late as March.
Patent ownership is a critical factor that some venture capital companies consider when investing in entrepreneurs and small business owners who hope to grow their businesses. Prioritized patent examination may be a good investment for a small business.
A blog version of this article and an opportunity to post comments is available at http://www.wyomingentrepreneur.typepad.com/blog/.
The WSBDC is a partnership of the U.S. Small Business Administration, the Wyoming Business Council and the University of Wyoming. To ask a question, call 1-800-348-5194, email email@example.com or write 1000 E. University Ave., Dept. 3922, Laramie, WY, 82071-3922.