While most stakeholders are focused on the first-inventor-to-file changes to U.S. patent law that take effect on March 16, 2013, some applicants could realize significant cost savings by taking certain actions by March 18, 2013, to avoid the new USPTO fees that take effect on March 19, 2013. Applicants in the process of preparing Appeal Briefs will be interested to know that the USPTO will waive the new appeal fee if an Appeal Brief and fee are filed before March 19, 2013.
Next week (February 4, 2013) is the deadline for submitting comments in response to the USPTO’s request for feedback on Request for Continued Examination (RCE) practice. (This article provides more information on the request for feedback.) The USPTO’s treatment (or neglect) of RCEs will become even more frustrating after March 19, 2013, when the costs for filing RCEs will increase significantly. I urge stakeholders in the biotechnology and pharmaceutical industry–where RCEs are a normal step in the patent prosecution process–to make their voices heard and urge the USPTO to adopt policies and practices that ensure that Requests for Continued Examination are examined in a timely manner.Continue reading this entry
The USPTO has published the new patent fee structure that it is implementing pursuant to its fee-setting authority under the Leahy-Smith America Invents Act (AIA). While some patent prosecution fees are decreasing, most large entities will see their total patent prosecution fees increase. The majority of the new USPTO patent fees will take effect on March 19, 2013, but some will not take effect until January 14, 2014. Continue reading this entry
As announced on the USPTO website, as of June 30, 2012, there will be a daily limit of $49,999.99 for credit card accounts, but no daily limit for debit card accounts. (Currently, the daily limit for both credit card and debit card accounts is $99,999.99.) The new limit will be enforced automatically through the Pay.gov system, and any transaction that would exceed the limit will be rejected. Notably, the new cap may be too low for even a single Request for Inter Partes Review or Post Grant Review depending on the number of patent claims at issue.
(The USPTO also accepts payment by deposit account, electronic funds transfer (EFT) over the USPTO Website, and wire transfer through the Federal Reserve Fedwire System.)
A Federal Register Notice set to publish on May 30, 2012, sets forth the USPTO’s proposed rules for implementing the Micro Entity provisions of the America Invents Act (“AIA”). The proposed rules closely track the new law, but the USPTO seeks input on one important issue of statutory interpretation. Public comments on the proposed rules should be submitted by July 30, 2012.Continue reading this entry
On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed patent fees. Even taking the USPTO’s cost estimates at face value, I have several questions and concerns about some of the proposed fees. Continue reading this entry
The USPTO has published non-final versions of its proposed rules for the new “contested cases” created by the America Invents Act (Inter Partes Review, Post Grant Review and Derivation proceedings) on its AIA Implementation website. According to the USPTO, the official Federal Register Notices will be published later this week, on February 9 and 10. Written comments will be due by April 9 or April 10, depending on the exact publication date of the proposed rule at issue.
The USPTO also has published its proposed patent fee schedule for the fees it plans to charge under its new fee-setting authority. The USPTO is holding PPAC Fee Setting Hearings on February 15 (at the UPSTO’s Alexandria campus) and February 23 (in Sunnyvale, California).Continue reading this entry
Today’s Federal Register includes the USPTO’s proposed rules to implement the Supplemental Examination provisions of The America Invents Act. I am in London for the C5 Biosimilars Forum, so I have not been able to read the 70 page notice, but the proposed new ex parte reexamination fee caught my eye as I skimmed through: $17,750.