The Puget Patent Blog

Business As Usual at the USPTO, For Now

Posted Tuesday, October 1, 2013.

The USPTO released the following information regarding events of October 1, 2013:

“During the general government shutdown that began October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. We continue to assess our fee collections compared to our operating requirements to determine how long we will be able to operate in this capacity during a general government shutdown. We will provide an update as more definitive information becomes available.

“Should we exhaust these reserve funds before the general government shutdown comes to an end, USPTO would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. …”

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USPTO Fee Changes

Posted Sunday, March 17, 2013.

The US Patent and Trademark Office will be changing its fees effective Tuesday, March 19.

One aspect of the fee changes is to more fully implement the “micro entity” discount. The patent office has historically granted a 50% discount in fees to applicants claiming “small entity” status, which include small businesses as defined by the SBA (fewer than 500 employees, among other requirements).

The micro entity is an applicant who is a small entity with four or fewer patent applications and has an annual gross income as defined by IRS rules below a particular threshhold announced by the patent office each year. The income threshhold will be set at three times the median household income for that preceding calendar year. Previously, micro entities were entitled to the 75% discount on the filing fee, but will now enjoy the discount throughout the fee schedule for as long as their status remains a micro entity.

Other interesting aspects of the new fees are that the patent office plans to drop the $300 publication fee (which was not discounted even for small entities), and to change the fee structure for Requests for Continued Examination (RCEs). Previously, in a case where the applicant desired more than one continued examination, the fee for each RCE request was the same. Now, however, the first RCE have a “first RCE request fee” and each subsequent RCE will have a “second and subsequent RCE request fee” which is 42% higher than for the first RCE.

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First to File Takes Effect in the United States

Posted Friday, March 15, 2013.

It’s now after midnight on March 16, 2013 at the United States Patent and Trademark Office. “Patent reform” is here!

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Final Implementation of Patent Reform (America Invents Act) Close at Hand

Posted Sunday, March 10, 2013.

The final date for implementation of the America Invents Act of 2011 (the “AIA”, otherwise known as the patent reform act) is later this week. All applications for a patent filed through March 15th will be considered under the existing patent law. Applications filed after that date will receive consideration under the law set by the AIA. That includes implementation of First-to-File rules, among other things.

But what is the impact of the AIA for applications filed on or after March 16th which claim priority to an application submitted prior to the transition date? For example, for applicants with provisional applications filed prior to 3/16/13, under which rules will a related non-provisional application filed on or after that date be considered?

The answer is that patent claims filed after 3/16/13 which draw their support from subject matter disclosed in the provisional filed before that date will be considered under the old law. However, if the claims in that non-provisional are not supported by the provisional filing, those claims will effectively get the filing date of the non-provisional application, meaning they will be considered under the AIA law.

Inventors with a provisional application on file are advised to have the non-provisional filed on or before March 15th, particularly if the non-provisional application will contain a fuller description of the invention than the provisional filing. Claims submitted for consideration after March 15th will be subject to the AIA if it can’t be shown that the claim is supported by adequate description in the provisional application.

Similarly, a Continuation-in-Part (“CIP”) application filed once the AIA is fully implemented that claims priority to a pre-AIA application will only have its claims treated under the old rules if there is support in the prior application for the claims of the CIP. A CIP usually includes new subject matter and ordinarily the claims refer to the new subject matter, so it would be unusual for a CIP to get consideration under the old rules.

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USPTO Fee Increase, October 5 2012

Posted Thursday, October 4, 2012.

The USPTO is increasing fees for transacting business. Filing fees, extension fees and issuance fees will all go up a small amount on Friday, October 5.

For example, the small-entity new utility application fee will rise from $530 to $533 (including search, examination and filing fees). The small-entity fee for issuance will go from $870 to $885. Extension fees, which are paid when an Office Action response is filed more than three months after the mailing date of the Office Action, are also going up.

Some fees, such as the fee to enter the Track I program, the publication fee, the fee for a Request for Continued Examination (RCE) and the Terminal Disclaimer filing fee stay the same. These are less commonly incurred during prosecution. But the basic fees paid in just about every instance are all increasing.

All the rates above are set and collected by the USPTO and are subject to change at any time.

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