In a bipartisan 89–9 vote, the Senate has passed H.R. 1249 without amendment. The Smith-Leahy America Invents Act will become law once signed by President Obama within the next week or so. This Act will mean some significant changes to our patent system. Some provisions will be effective 18 months from enactment while others will be effective immediately. Arguably, the most important provision will be the change from a “first to invent” system (where the first to invent is entitled to the patent) to a “first to file” system (where the first to file a patent application is entitled to the patent). It will take time for the USPTO and the patent bar to analyze the effects of the various provisions of the Act. Check back here again for more information.
09 September 2011
On September 16, 2011, President Obama signed the Leahy-Smith Patent Reform Act — enacting it into law. The provisions of the new law have a variety of effective dates. Some changes to the law are effective immediately, such as the “micro entity” filing status for a 75% reduced fees. Increase in PTO fees, as well as the $4800/$2400 fee for prioritized examination, are effective on September 26, 2011. Other changes will not be implemented until 2012 or 2013. These include the revised post-grant opposition procedures, the rewriting of the rules of novelty and nonobviousness, and the transition to a “first-to-file” system (vs the current “first-to-invent” system).
16 September 2011
Part of the implementation of the new Patent Reform Act of 2011 is a 15% surcharge on fees charged by the US Patent and Trademark Office, starting on September 26, 2011. For cost conscious filers, the increase is significant. For example, the fees for electronically filing a regular patent application by a small entity, (including the basic, search, and examination fees) will be raised from $462 to $530; the issue fees will be raised from $755 to $870; and fees for a Request for Continued Prosecution (RCE) will be raised from $405 to $465. Even fees for filing a provisional patent application by a small entity will be raised from $110 to $125, and an additional $50 processing fee will be incurred, raising to total cost to $175. (Go here to see the full USPTO fee schedule.
Commentary by author: let’s hope that this increase in fees means that the USPTO will have the resources to improve their services and decrease the backlog of applications. However, for many years, Congress has been diverting the fees the USPTO collects to fund other budgetary items, a process called “fee diversion”. Although the newly enacted Patent Reform Act does not include an end to fee diversion, Director Kappos has apparently been assured that patent office will be allowed to spend the fees it collects. Let’s hope this is true. Otherwise, the fee diversion and fee increases will be a poorly disguised tax on innovation.
20 September 2011
Applicants can now request Prioritized Examination when filing a non-provisional patent application (called “Track 1”). Under prioritized examination, an application will be accorded “special status” and placed on the examiner’s special docket until a “final disposition” is reached. The goal is to provide a final disposition within twelve months of prioritized status being granted. Any of the following would constitute a final disposition:(1) mailing of a notice of allowance; (2) mailing of a final office action; (3) filing of a notice of appeal;
(5) filing of a request for continued examination (RCE); and (6) abandonment of the application.
To qualify for Prioritized Examination, a non-provisional patent application must be electronically filed via EFS-Web with: (1) a Request for Prioritized Examination; (2) executed oath or declaration; (3) no more than four independent claims and no more than 30 total claims, and no multiple dependent claims; and
(4) all required fees paid.
Assuming 30 claims and 4 independent claims are filed, the filing fee for prioritized examination would be $5330 for a large entity and $3785 for a small entity.
Your application will lose its prioritized status if you either amend your application to contain more than four independent claims or more than 30 total claims or file a request for an extension of time to reply to an office action.
For the current fiscal year, the USPTO will only grant prioritized status to 10,000 applications. Depending on the performance of this program, the USPTO may expand this examination track.
Prioritized examination is currently not for available for international applications, design applications, reissue applications, provisional applications, reexamination applications, or national phase applications. It is available for continuation and divisional applications, however, prioritized examination status will not be automatically given.
Prioritized examination provides a way for an applicant to fast track the examination of an important invention. The need for fast tracking your application must be weighed with the additional costs.
If you wish to learn more about prioritized examination, or are determining whether this is a good option for you, we invite you to give us a call.
28 September 2011
The Leahy-Smith America Invents Act creates a new “micro-entity” fee status. Small inventors and universities may qualify for a 75% discount on certain USPTO fees. An inventor/applicant may be a “micro-entity” if: (1) she qualifies as a small entity; has not been named as an inventor on more than 4 previously filed US non-provisional patent applications (not including inventions assigned based upon prior employment); (3) does not have an income of more than 3x the median US household income ($50k for 2009); and (4)has not conveyed or contractually promised to convey rights or to an entity that has an income of more than 3x the median US household income.
However, the USPTO has interpreted the relevant sections of the Act to mean that it cannot permit micro-entity status until it has gone through the required Federal Register notice-and-comment procedure, which could take a number of months.
04 October 2011
Currently, you have one year from the date of certain events to file for a US patent. This one year is commonly called the “one year grace period”. The events include: the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country.
Under the America Invents Act, on March 16, 2013, there will no longer be a grace period for public use or commercial activities such as sales or offers for sale.
The removal of this grace period is part of the upcoming transition from a first-to-invent system to a first-to-file system. Under the current first-to-invent system, if two inventors file patent applications for the same invention, the person who invented first is the one entitled to a patent, regardless of when the two inventors filed their patent applications. Under the first-to-file system, the invention date will no longer control. Instead, the inventor who filed a patent application first will be the one entitled to the patent.
There will be some exceptions for disclosures by the inventor or one who obtained the subject matter disclosed directly or indirectly from the inventor within one year prior to the application’s filing date. These exceptions will be discussed in a later post.
Commentary by author: Even though March 16, 2013 seems far away, we do not know yet the details of how the transition will occur. For example, what if you have a public use or commercial activity between March 16, 2012 and March 16, 2013? If you file after March 16, 2013 but within a year of your public use/commercial activity, do you or don’t you still have your one year grace period? The plain language of the new statute suggests that you don’t. In short, starting March 16, 2012, keep an eye on your public uses and commercial activities. You may not have your full one year grace period and will need to file for patent protection before March 16, 2013.
14 October 2011
In the previous post, I discussed the upcoming transition from a first-to-invent system to a first-to-file system under the America Invents Act. The provisions of the Act relevant to this transition are scheduled to go into effect on March 16, 2013.
Under some limited exceptions, an earlier filed application will not necessarily preclude a patent on a later-filed application by the invention: (1) if a disclosure in a patent or patent application was obtained directly or indirectly from the inventor; (2) if the inventor had disclosed the invention within a year of filing her application; or (3) if the claimed invention and the disclosure were owned by the same entity or subject to an assignment obligation to the same entity, as of the effective filing date, an earlier filed application will not necessarily preclude a patent on a later-filed application by the invention. Note that there is exception for public use or commercial activities such as sales or offers for sale.
Caution, however, should be used by inventors in relying on any of these exceptions. The disclosure likely will need to be “enabling” (an enabling disclosure is a description of an invention that gives a “person having ordinary skill in the art” (P.H.O.S.I.T.A.) enough information and direction to duplicate the invention on his/her own). Inadvertent disclosures are unlikely to meet this requirement and would preclude qualifying under one of the exceptions.
18 November 2011
Nice article by Doug Ealey of D Young & Co.* in the UK, giving an European Perspective on the US’s impending shift to a First-Inventor-To-File system. Read the article… (See Article 6)
14 December 2011
The America Invents Act granted the PTO the right, for the first time, to set its own fees. Previously, PTO fees were set by Congress. The PTO has now published its proposed fee schedule. Not surprisingly, the fees are going up. The PTO seeks to increase its funding to deal with backlog issues in applications and appeals.
The proposed new fees significantly increase the current fees:
- *Basic filing, search, and exam fee: $1,840 from $1,250 (up 47%);
- *More than 3 independent claims: $460 each, from $250 (up 84%);
- More than 20 toal claims: $100 each, up from $60 (up 67%);
- *Request for Continued Examination (RCE): $1,700 from $930 (up 83%);
- Notice of Appeal: $1,500 from $620 (up 142%), but the PTO proposes to waive the issue fee if the examiner withdraws the final rejection;
- *Proceeding with appeal: $2,500 after examiner’s answer to move to board; there is no longer any fee for filing an appeal brief (was $620);
- *Issue and Publication fees: $960 from $2,040 (DOWN 53%);
- *Maintenance fees: $1,600, $3,600, $7,600 from $1,130, $2,850, $4,730 (up 42%, 26%, 61%, respectively).
The above stated fees are for large entities. Small entities (companies with less than 500 employees) will pay 50% of the stated amount.
Micro-entities receive a 75% discount on the stated fees.
The PTO has sent the proposed fee structure to the Patent Public Advisory Committee (PPAC) and they will begin a series of public hearings. PPAC will hold hearings, gather feedback from the public and prepare a report to the PTO. After the hearings, the PTO will publish the final proposed rules on fees in the Federal Register, probably in June. This will begin a 60-day comment period on the rules which they hope to implement by fall.
See the USPTO press release.
16 February 2012
The America Invents Act of 2011 is changing the way the US patent system works. Several of these changes are coming in September 2012. This post highlights one of these changes.
On September 16, 2012, assignees of inventions will be allowed to file U.S. patent applications. Under this new provision, after a U.S. patent application is filed on behalf of the inventor(s), an assignee of the entire right to the invention can request to exclude the inventor(s) from prosecution by proving ownership of the entire right to the invention. Proof of ownership can be an assignment from the inventor(s) or proof of an obligation on the part of the inventor to assign the invention (e.g., an employment agreement covering intellectual property rights).
Prior to this change, U.S. patent law only allowed the true inventor(s) to file patent applications, except in specific circumstances when one or more of the inventors was unwilling to sign an oath or declaration for a patent application; could not be located after diligent effort; or was deceased, legally incompetent or incapacitated. In these cases, the party seeking to file on behalf of the true inventor(s) was required to file a petition along with various signed statements and/or evidence. The new provision will remove the need for an assignee (or employer having a suitable employment agreement in place) to ask the inventor(s) to execute an oath or declaration for a patent application.
09 March 2012