Posts Tagged: "RCE"

The final rules on patent fees will publish in the Federal Register on Friday, January 18, 2013. Fees are going up for most, but not as much as feared. It will be more expensive to file a utility patent application, except for micro-entity applicants (see Utility Filing Fees Table), but it will be less to pay the issue fee once you get a Notice of Allowance (see Issue Fee Table). It will cost 29% more to file the first RCE for large and small entities (see First RCE Fees Table), and 83% more for subsequent RCE filings for large and small entities (see Subsequent RCE Fees Table). The ex parte reexaminations fees are much lower, down 32% and 66% respectively for large and small entities (see Reexam Fees Table), but are still much higher compared to where they were prior to them being raised over 600% recently. Of course, cutting ex parte reexamination fees means the overall cost is still roughly 250% higher for small entities and 500% higher for large entities than this time last year.

On November 1, 2012, a federal district court (EDVA) issued an order that may have profound consequences for calculations of patent term adjustment (“PTA”). The district court believed that the PTA promised by 35 USC § 154(b)(1)(B)(i), which relates to Requests for Continued Examination, only comes into play if a RCE is filed within the three-year period from the application’s filing date. Before discussing the court’s order, let me review the law and regulations about PTA—which can be complex. In 1994, Congress altered the calculation of U.S. patent terms. Previously, Congress set the patent term as 17 years from patent issuance. After the change, Congress set the patent term as generally 20 years from the filing of the patent application.

In the QPIDS pilot, IDS submissions will be considered by the examiner before determining whether prosecution should be reopened. Prosecution will only be reopened where the examiner determines that reopening prosecution is necessary to address an item of information in the IDS. When the items of information in the IDS do not require prosecution to be reopened, the application will return to issue, thereby eliminating the delays and costs associated with RCE practice.

All and all this seems like a positive development. If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search. Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and allowed to be added to the case. This should be quite beneficial to independent inventors, small businesses and start-ups who absolutely, positively need to get patents as quick as possible to continue to raise funds from investors.

hange does not come easily. At a minimum, the PTO must stop encouraging and rewarding examiners for actions that defeat the objectives of the office. As long as examiners are credited and rewarded for acting upon every application that they can force an applicant to file, examiners can be expected to seek the credit and reward, and the backlog will be with us. As long as examiner performance is based upon the conventional (N + D)/2, the incentives will foster counter-productive behavior in the examining corps and the Office will not make meaningful strides toward accomplishing its mission. Examiners will do what they are rewarded for doing – generating as many N’s and D’s as possible without regard to whether anything is really being accomplished.

Let’s first consider one of the “bread and butter” components of patent prosecution, the utility application filing fee. Actually, this basic fee comprises three components: the filing fee, the search fee, and the examination fee. In the proposed fee changes, this utility application filing fee will increase from $1250.00 to $1840.00 (or from $625.00 to $920.00 for those qualifying as “small entities,” which get a 50% reduction in this fee). The biggest portion of this increase is reflected in the examination component, which has increased from $250.00 to $780.00 (or from $125.00 to $390.00 for those qualifying as “small entities”). Excess claim fees (total claims in excess of 20 and independent claims in excess of 3) have also gone up significantly, from $60.00 to $100.00, and from $250.00 to $460.00, respectively. (I’ll let you do the math for those qualifying as “small entities.”)

Director Kappos was extremely gracious with his time, speaking to me on the record for nearly 90 minutes. He answered every one of my questions without dodging, and even spent time to discuss several things I did not raise. Truthfully, I could have spoken with Director Kappos for many additional hours, but I believe you will find that neither I or he shied away from any topics. We chatted about the problems with lengthy application delays, the increasing discontent within the patent bar regarding RCE filings, the America Invents Act and the challenges he faces getting 6000+ patent examiners on the same page with policy initiatives, among many other things.

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

At lunch Director Kappos explained that the goal for fiscal year 2010, which ended on September 30, 2010, was to get the backlog down to 699,000 — dubbed “project 699.” The Office was not successful, but Kappos says they will get well below 700,000 for fiscal year 2011, perhaps as low as a backlog of 650,000. Kappos’ immediate follow-up: “I say that as Commissioner Stoll starts to choke at me saying that.” Indeed, there are ambitious goals at the USPTO for FY 2011, including a move to unity of invention.

This strategy is tried and true, and any company with a serious patent portfolio and an eye toward enforcing that portfolio through licensing or litigation has followed this strategy. What you do is look at what your competitors are doing, or what that big target prospective licensee is doing, and you write a claim that exactly covers what they are doing. Then you add that specific claim to your continuation. As long as your original disclosure supports that claim you are entitled to add the claim. So if you are a serious inventor, a would-be patent troll or a business of any size with designs on licensing or litigating, you absolutely cannot cut corners at the time of filing the first, foundational patent application. You want the kitchen sink in that first patent application because if the path proves commercially viable you will want to milk the disclosure for many patents, and you will want to be able to argue convincingly that whatever claims you add later are actually covered by your initial patent application.

Hopefully the seemingly modest successes of team Kappos in fiscal 2010 will be viewed for what they are, which is rather extraordinary, by our leaders in Washington, DC. With all the odds against them, having to fight daily for adequate funding, fewer patent examiners and a Congress that STILL siphons money paid by innovators away from the Patent Office, team Kappos was still able to increase allowances by 5.3% and dent the backlog. Can you imagine what they could do with adequate funding?

The Visualization Center shows graphics that look much like a speedometer, which is where the Patents Dashboard moniker comes from, but the data is also available for those who want to see the numbers and figures used to create the easy to understand graphics. It is not pretty to see that the average pendency to a case where a Board decision is necessary is 76.1 months, and the average pendency of a case where one or more RCEs are filed is 60.7 months. This is unacceptable and hopefully leaders in Congress are paying attention! They have been mislead for many years. So the numbers are in some cases going to be terrifying, but ignoring the truth simply will not lead to the change and efficiencies needed.

As you will read in Part 1 of the interview (see below) Dickinson was not only the first Director of the USPTO, but he was the last Commissioner. The American Inventors Protection Act shuffled the titles around for seemingly unknown reasons, and since the AIPA went into effect while Dickinson was at the helm of the USPTO he is guaranteed a place in patent history, or at least patent trivia. In Part 1, I also asked him about how he managed to bring down average pendency during his tenure, which was the only time over the last 20+ years that has happened. We also discussed how he managed to get on the short list for the Director/Commissioner job, the confirmation process, the craziest question he received during confirmation, vanishing IP boutiques and RCEs. Part 2 is largely devoted to patent reform, which will be extremely interesting, I promise!