Patent Fee Adjustments

The Federal Register for Jan. 18, 2013 contains a final rule pertaining to setting and adjusting patent fees. To see the complete rule access http://www.gpo.gov/fdsys/pkg/FR-2013-01-18/html/2013-00819.htm The following excerpt from the summary provides a rationale for changing the fees:

The United States economy depends on high quality and timely patents to protect new ideas and investments for business and job growth. To reduce the backlog and decrease patent application pendency,the USPTO must examine significantly more patent applications than it receives each year for the next several years. Bringing the number of applications in the backlog down to a manageable level, while at the same time keeping pace with the new patent applications expected to be filed each year, requires the Office to collect more aggregate revenue than it estimates that it will collect at existing fee rates. The Office estimates that the additional aggregate revenue derived from this fee schedule will enable a decrease in total patent application pendency by 11.3 months during the five-year planning horizon (fiscal year (FY) 2013-FY 2017), thus permitting a patentee to obtain a patent sooner than he or she would have under the status quo fee schedule. The additional revenue from this fee schedule also will recover the cost to begin building a three-month patent operating reserve. The Office estimates that the patent operating reserve will accumulate almost two months of patent operating expenses by the end of the five-year planning horizon (FY 2013-FY 2017) and will reach the three-month target in FY 2018, thereby continuing to build a sustainable funding model that will aid the Office in maintaining shorter pendency and an optimal patent application inventory.

Additionally, the fee schedule in this final rule will advance key policy considerations while taking into account the cost of individual services. For example, the rule includes multipart and staged fees for requests for continued examination (RCEs), appeals, and contested cases, all of which aim to increase patent prosecution options for applicants. Also, this rule includes a new 75 percent fee reduction for micro entities and expands the availability of the 50 percent fee reduction for small entities as required under section 10, providing small entities a discount on more than 25 patent fees that do not currently qualify for a small entity discount.

USPTO/Smithsonian Collaborate to Open an "Innovation Pavilion"

On January 16, 2013 the USPTO announced a collaboration with the Smithsonian to open an "Innovation Pavilion" to be housed in the Smithsonian's Arts and Industries (A&I) Building in Washington, D.C. once it reopens in 2014. The space is designed to "serve as a forum for public discussions, symposiums, workshops, and recognition ceremonies related to American innovation, highlighting the vital role patents play in supporting that innovation." The Smithsonian and USPTO will also collaborate on an Innovation Expo to be held June 20-22, 2013 at the USPTO headquarters in Alexandria, Virginia.

For more information see the press release.

Request for Comments on Preparation of Patent Applications

The USPTO is seeking comments regarding improving the quality of issued patents. See complete information for the Jan. 15, 2013 Federal Register Comment Request at: http://www.gpo.gov/fdsys/pkg/FR-2013-01-15/html/2013-00690.htm. The summary is listed below.

SUMMARY: The United States Patent and Trademark Office (USPTO) is seeking to improve the quality of issued patents. In this notice, the USPTO is focusing on potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents. To that end, the USPTO is requesting input from interested members of the public on the specific practices set forth in the ``Topics for Public Comment'' section below. While this notice is directed to potential practices that applicants can employ, the USPTO also plans to issue a separate notice building on internal initiatives and further identifying potential practices the Office can employ to also facilitate examination and bring more certainty to the scope of issued patents. The USPTO intends to publish the separate notice subsequent to its review of comments received responsive to the present notice.

On January 3, 2013, the USPTO published a notice announcing the formation of a partnership with the software community to enhance the quality of software-related patents (Software Partnership). See Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents, 78 FR 292 (Jan. 3, 2013). The Software Partnership notice seeks public comment on specific topics related to enhancing the quality of software-related patents,and announces two roundtable events, which will not only offer participants an opportunity to provide oral comments on the topics presented in the Software Partnership notice but also on the topics set forth in the present notice, to the extent they apply to software- related patents.

Comment Deadline: To be assured of consideration, written comments must be received on or before March 15, 2013. No public hearing will be held.

Extension of the Extended Missing Parts Pilot Program

The summary of Federal Register Notice 2013-00336 states:

The United States Patent and Trademark Office (USPTO) implemented a pilot program (Extended Missing Parts Pilot Program) in which an applicant, under certain conditions, can request a twelve- month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional application. The Extended Missing Parts Pilot Program benefits applicants by permitting additional time to determine if patent protection should be sought--at a relatively low cost--and by permitting applicants to focus efforts on commercialization during this period. The Extended Missing Parts Pilot Program benefits the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which applicants later decide not to pursue examination. The USPTO is extending the Extended Missing Parts Pilot Program until December 31, 2013, to better gauge whether the Extended Missing Parts Program offers sufficient benefits to the patent community for it to be made permanent.

For more information, access the Federal Register notice at http://www.gpo.gov/fdsys/pkg/FR-2013-01-10/html/2013-00336.htm .

Changes To Implement Micro Entity Status for Paying Patent Fees

The USPTO has published its final rule regarding changes to implement micro entity fees. The rule includes qualifications to receive the seventy-five percent fee reduction for those who qualify. More information is available from the Dec. 19, 2012 Federal Register at http://www.gpo.gov/fdsys/pkg/FR-2012-12-19/html/2012-30674.htm or 77 Fed. Reg. 75019 [PDF]

Request for Comments on a Patent Small Claims Proceeding in the United States

The USPTO is seeking comments before March 18, 2013 about whether to develop a small claims proceeding for patent enforcement. "In particular the USPTO seeks information about core characteristics of a patent small claims proceeding including characteristics such as subject matter jurisdiction, venue, case management, appellate review, available remedies, and conformity with the U.S. constitutional framework (e.g. 7th Amendment)." For more information, see the Federal Register comment request of Dec. 18, 2012 at http://www.gpo.gov/fdsys/pkg/FR-2012-12-18/html/2012-30483.htm.