November 5, 2013

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Obtaining a Patent Using USPTO’s Prioritized Examination Process

By Steven P. Shurtz

November 5, 2013

Protecting new ideas is critical, particularly for Utah’s thriving technology, pharmaceutical, bioengineering and computer software companies. Patents provide the primary means of protection. For any company, patents provide a vital period of market exclusivity. For startups, patents help assure investors the company will be able to profit from its innovations so that they can recoup their investments.

Opportunity Costs

Patent protection certainly comes with costs. The United States Patent and Trademark Office’s (USPTO) fees for filing and examination are normally about $1,600—higher if the application includes more than an allotted number of claims. And businesses do have to be mindful of attorneys’ fees, which vary, in preparing an application.

Far more costly, though, is lost opportunity due to how long securing a patent can take. The USPTO has so large a backlog that it takes between three and five years for a patent to grant. From 2010 to 2012, in three industry sectors important to Utah’s economy, almost 2,000 patents were granted to Utah inventors—but the average period from filing to grant was daunting:

  • Medical devices
    (472 patents): 54 months
  • Computers and software (1,307patents): 54 months
  • Pharma
    (173 patents): 42 months

Predictably, this frustrates business owners. Many ask if there’s a way to accelerate the process, especially if a product is successfully launched and competitors have begun introducing their own versions.

Fortunately, there is. The USPTO recently established a fairly simple fee-based procedure: Track One Prioritized Examination. Since being implemented shortly after the America Invents Act was signed into law in September 2011, Track One has drastically decreased the time it takes to obtain a patent. The average period from filing to grant has been 10 months in all categories, nationwide.

The cost for faster examination? For a business owner, it’s often well worth it. Track One Prioritized Examination costs an additional $4,940, plus an upfront payment of the $300 publication fee normally paid when the application has been allowed. If your business qualifies as a “small entity,” nearly all the USPTO fees are halved.

There are other requirements. The application must be filed “complete,” accompanied by all required papers signed by the inventors. (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.

For most entrepreneurs these requirements are easily met. However, the program’s success may prove a limitation to interested filers: The USPTO may suspend the program if more than 10,000 Track One applications are filed in its fiscal year.

Attention to Detail

When a Track One application is filed, the USPTO first reviews it to ensure all these requirements are met and that other formalities are complied with, such as the length of the abstract. If not, the applicant will be asked to correct the deficiencies. Once all is in order, the Office of Petitions sends a notification that the application has been granted Track One status, and it is assigned 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’s 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.

One 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. This author filed three Track One applications in November/December 2012, and in each case had received a first Office Action and was able to meet with the assigned examiner and supervisory examiner within three months of the applications’ filing.

Such interaction is important. Prosecuting a patent demands close attention to details—not only to the intricacies of an invention, but also to the examination process itself. Track One speeds prosecution, but to succeed an applicant will want contact with the Group Art Unit director to see that the case is assigned as soon as the Track One petition has been granted. Such nuances can mean the difference between a rapid grant or the proverbial “four more years.” 

Steven P. Shurtz is managing partner of the Salt Lake City office of intellectual property law firm Brinks Hofer Gilson & Lione, and is chairman of the IP Section of the Utah State Bar.


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