Hands off: obtaining a patent Using USPTO's Prioritized examination process.

• Author: Shurtz, Steven P.
• Position: Legal Brief

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 tee 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.)...