CHANGES IN PATENT LAW PROPOSED BY THE USPTO

21st CENTURY STRATEGIC PLAN

ANALYSIS BY THE LAW OFFICE OF THOMAS L. ADAMS
In Private Practice for 25 Years

Fee Increases

Patent applicants would face a new Patent Examination fee of $1,250.00. When balanced against a reduced initial filing fee, applicants would face a net increase of $810.00 (large entity) or $1,030.00 (small entity). A new category of applicant called a patent "micro entity" would face an increase of $530.00, in comparison to today's small entity rates. Micro entities would be individuals with incomes below a threshold that has yet to be determined. The proposed maintenance fees due after the patent issues would increase overall by about 33%. A patent micro entity and small entity would pay the same maintenance fees.

Searching

The PTO would expect U.S. applicants to conduct and submit their own search report. If the PTO is dissatisfied with this search report, it can require the applicant to conduct an additional search. Micro entities need not submit a search report, but the PTO expects to outsource this searching to third party contractors. For applications first filed overseas, the PTO will examine the search report from the foreign patent office. Some have expressed concern that divorcing patent office examiners from the details of searching will degrade their competence and effectiveness.

Deferred Examination

The PTO would take no action on patent applications until the applicant requests examination and pays an examination fee. The examination fee must be paid within 18 months of the earliest U.S. filing date. This potential increase in the pendency increases the length of time that patent rights remain uncertain.

Alternative Dispute Resolution

The PTO proposes adjudicating patent validity outside the Federal Courts with administrative patent judges sitting on a Board of Patent Adjudication. Any member of the public can challenge the validity of patent claims within one year of the patent's issue date. Anyone accused of infringing a patent can also challenge patent validity within four months of the date of accusation. These cases are to be proved by documents or, if necessary, by live cross-examination. These hearings are to be concluded within one year.

Frivolous Filings

Financial sanctions are proposed for patenting a product or method, where every part of the product or method is widely known.

Expedited Examination

A restructured, expedited application procedure would guarantee issuance of a patent within 12 months.

Surcharges for Disfavored Practices

The PTO proposes fairly steep surcharges to discourage applications with a large number of claims. Applications with more than three independent claims and more than 20 claims total are targeted. The proposed surcharges would be quite effective in reducing the number of claims. For example, a small entity filing 50 total claims (three independent) would pay a fee of $15,000.00. The PTO is also targeting applicants who delay procedures by filing multiple continuation applications. The latter surcharges can range from $1,000.00 to $8,000.00.

Copyright 2002 Thomas L. Adams

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