PTO Implements America Invents Act With Prioritized Examination

Posted on October 5, 2011 by Brian Wm. Higgins

 

           The America Invents Act includes provisions for prioritized patent application examination that emulate the requirements of the Patent Office's "Track I" final rule.  76 FR 185 (September 23, 2011).  Under the system, a patent applicant pays an extra $4,800 fee ($2,400 for small entities) to have his or her patent application undergo accelerated examination.

          To qualify for the procedure, the application must have no more than 30 total claims and 4 independent claims.  

          Only the first 10,000 patent applications (per fiscal year) that pay the fee and meet the requirements will be accepted into the system. 

          According to the Patent Office, unlike the prior accelerated examination system (which continues to exist as well), a prior art search and an examination support document (ESD) are not required to be submitted with the application.  Those two elements of the prior accelerated examination system were disliked by many patent practitioners because of the belief the search and ESD could create estoppels and provide fodder for inequitable conduct arguments by third parties during litigation.
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Patent Reform Ushers in Higher Patent Fees

Posted on September 22, 2011 by Brian Wm. Higgins

          Yesterday, the U.S. Patent & Trademark Office (PTO) published a revised fee schedule, which reflects a 15% increase in many fees required to be paid by users of PTO patent-related services.  On and after September 26, 2011, the basic filing fee for a utility patent application, for example, will increase from $330 to $380.  Mandated by Section 11(i) of the America Invents Act of 2011 (AIA; H.R. 1249; Public Law 112-29), the so-called "surcharge" fees are intended to make the PTO more "efficient and productive" by allowing it to set its own fees and use all fees collected for agency operating purposes.  For more on the PTO's fee changes, see the public announcement here.

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Patent Reform Coming Soon?

Posted on January 16, 2008 by Brian Wm. Higgins

     Several sources (see 271 Blog, for example) are reporting that another obstacle facing patent reform was overcome yesterday when the Senate Judiciary Committee reported on S. 1145, the Patent Reform Act of 2007. According to the Intellectual Property Owners Association (IPO), the "106-page draft report explains in depth the provisions of the bill as approved by the Senate on July 19, 2007, but does not contain any new or compromise provisions."

     So, will patent reform actually happen this year, as some predict? Gene Quinn over at the PLI Blog notes that "patent legislation usually has a gestation period of between 2 to 3 years, and given that Congress began working seriously on some form of patent reform in 2005 the timing is right." On the other hand, industry associations, individuals, and other stakeholders have been pulling Congressional ears in different directions as long as patent reform legislation has been around, so I'm not sure that we'll see significant patent reforms, especially when you consider that several contentious provisions are still present in the Senate bill. However, it seems likely that at least some reforms will be seen this year, as long as Congress doesn't wait too long and get distracted by the election cycle, and some of those anticipated "compromise provisions" make their way into the legislation before the Senate votes.

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