Responding to USPTO’s new Maintenance Fee Regime

On March 19, 2013, the USPTO’s new fees became effective. The most notable changes were the maintenance fees due at three intervals: 3½, 7½ and 11½ years after patent issuance. At each interval, the fees increase with the new top-fee set at $7,400 — a 50% increase over the old fee.

With the major fee increase, it is no surprise that savvy patent owners took advantage of the opportunity of paying the renewal fees early. The USPTO allows patentees to pay the fees due up to six-months early or, with a $160 fee, up to six months late.


18 thoughts on “Responding to USPTO’s new Maintenance Fee Regime

  1. 18

    The PTO is having funding problems. From POPA:

    From: Budens, Robert

    Subject: Bad News on USPTO Funding and Sequestration

    Dear Bargaining Unit Members,

    About a week or so ago POPA started hearing rumors that the White House Office of Management and Budget (OMB) was attempting to mess with USPTO funding by requiring that our sequestration hit be taken off of our fee income rather than our appropriated budget level. I also heard that USPTO management had been put under a “gag order” not to discuss these changes until approved by OMB and Commerce. The rumors also suggested that the sequestered fees would not go into our AIA reserve fund for later availability, but would in fact, not be available for USPTO use, i.e., our fees are going to be diverted once again, barely a month after full implementation of the AIA that was supposed to prevent fee diversion!

    In discussions with AIPLA, IPO and others, I learned that they had also heard such rumors and that none of us were getting any information out of USPTO management. To date and despite numerous inquiries from POPA, USPTO management has still not discussed this issue, all but confirming the gag order.

    I believe other recent developments have all but confirmed those rumors and I wanted to update you because OMB’s interpretation of the impact of sequestration on the USPTO will have significant impacts.

    Today, the OCIO notified its staff of an $80M cut to the OCIO budget. This will result in layoffs of a number of USPTO contractors and significant delays in the development of the Patents-End-To-End project (PE2E) and upgrades to PALM — both critical IT projects. Obviously this is not good news, but I suspect it is evidence that OMB’s sequestration decision is being implemented. And yesterday, you all should have seen the Memorandum from the ADCs regarding changes to overtime in the Examining Corps. Again, more evidence that the rumors are true.

    The USPTO’s fee income is currently below projected levels. In other words, we are already operating in a sequester environment by virtue of our reduced fee income. It is incomprehensible to me why the White House would then pile on us by taking such a negative interpretation of sequester on the USPTO. This is about as short sighted as anything I can think of. Our fee income represents filed patent applications that will need to be examined. To now take away those fees while leaving the USPTO with the work to do is counterproductive.

    With this new development, POPA can no longer feel confident that there will not be significant negative impacts on our bargaining unit members. I still do not believe that there will be furloughs in the immediate future, but unfortunately, I can’t say that furloughs may not raise their ugly head at some point in ahead. I do believe that this development may well adversely impact hiring, overtime availability, and possibly even bonuses. (Another anti-Federal employee bill in Congress would bar bonuses for Federal employees for FY13). Can you feel the love?

    Starting tomorrow, a number of us in POPA will be out of the office for the rest of the week for various meetings at which, I am confident, the USPTO’s budget and OMB’s actions will be a topic of discussion. If we are provided any additional information regarding these issues I will let you know.

    Wish I had better news for you.


  2. 17

    anon, if the prior presence of the plant or composition is required to invalidate a patent, then clearly what we have is a form of prior art.

    When you shrink from invalidating Monsanto’s plant patents when its patented genes are found in nature, all you do in reinforce that very point.

    There is no product of nature exception. There is a prior art exception, and it was (but no longer is) 102(f).

  3. 16

    Maybe they would be better off if they had ‘English as a second language.’

    That works wonders here.

  4. 15


    link to

    Sounds like a total flustercuck.

    With Justices Stephen G. Breyer and Sonia Sotomayor displaying what appeared to be the nearest approximation of some scientific understanding of human genetics, the other Justices who took an active part generally tried to stay away from those specifics, and to find ways to simply describe what Myriad’s scientists had done with its extraction of human genes.

    Specifics schmepifics! Oy.

    Myriad, of course, has argued that it did invent something with the extracted genes, but he struggled to try to differentiate that from the tree and the bat, and the Amazon plant and its sap.

    How much do these Supreme Court superlawyers get paid? It’s not as if these questions could not have been anticipated. Pathetic.

  5. 12

    Blake: Allowing some DNA to be patented but not others? Sounds like an ideal chance to confuse jury trials into giving large awards by arguing your DNA patent covers more than it really does.

    What? I don’t follow, at least not in the context of this dicussion.

  6. 11

    seems like a strange, arbitrary line to draw

    Your purposeful ignorance of what the term “warehouse of nature” means is no excuse of the law.

    What seems strange and arbitrary to you is most definitely a “you” problem.

  7. 10

    Then these claims are product-by-process claims?

    LOL! That would simplify things greatly. 😉

    I am just relieved to see some suggestion in these early reports that the court seems to be looking for some very narrow and nucleic acid-focused “solution” (assuming they are going to do anything), consistent with the questions granted on cert. I’ll keep my fingers crossed.

  8. 9

    He then, I think, reversed

    No Ned – I have always been consistent in my arguments.

    Forever and a day consistent.

    The “later appearance” issue is tied to whether or not you can treat 101 like 102 or 103. See the 9-0 Dance a Jig Baby Prometheus decision for that answer.

    For your other answers, the Supreme Court has also spoken – but you most decidely have not listened – nor have you ever provided any counter view to what the Court stated (of course, I am talking about Chakrabarty here).

    And as usual – for you – you abandoned the discussion without addressing the points I raised.

  9. 8

    Allowing some DNA to be patented but not others? Sounds like an ideal chance to confuse jury trials into giving large awards by arguing your DNA patent covers more than it really does.

  10. 7

    Malcolm, if the court says OK to cDNA, but not to isolated DNA, could it be because cDNA does not monopolize the association of the particular gene mutation with particular cancers?

    Whether or not any mutation is “monopolized” by a so-called “cDNA” claim would depend on the structure (i.e., the sequence) of the cDNA. Again, that’s because cDNA is just DNA. If I show you two pictures and tell you that one is a picture of an isolated “cDNA” and the other is a picture of an isolated “DNA”, you can’t tell me which is which. Given the sequence of the cDNA or DNA, anyone can make both molecules with the same machine.

    The term “cDNA” simply means that the sequence of nucleotides in the DNA is “complementary”to an ribonucleic acid polymer (specifically, mRNA, a molecule that is structurally distinct from DNA) that is expressed in a cell, somewhere on earth. The discovery of a new cDNA exploits that relationship but … it’s still just DNA. A cDNA will necessarily differ from “naturally occuring” chromosomal DNA only with respect to the chromosome of the organism from the cDNA was isolated and only if the organism has introns (intervening, non-expressed sequences) in the particular gene corresponding to the cDNA.

    To me, it seems like a strange, arbitrary line to draw, at least for the purposes of conferring eligiblity to certain molecules and not others.. There’s also the issue that the overwhelming majority of organisms on earth do not have introns and therefore the distinction between cDNA and DNA is even more pointless.

  11. 6

    if competitors can legally make isolated DNA, but not cDNA,

    Then these claims are product-by-process claims?

  12. 5

    Malcolm, if the court says OK to cDNA, but not to isolated DNA, could it be because cDNA does not monopolize the association of the particular gene mutation with particular cancers?

    In other words, if competitors can legally make isolated DNA, but not cDNA, is the association wholly preempted?

    On the “later appearance” issue, anon, for one, remonstrated that the timing of the discovery of a plant or composition is not an issue. I then asked exactly what this meant, for if I discover a Monsanto patented plant in the wild, is not the Monsanto plant invalidated if “timing” is not an issue?

    He then, I think, reversed his field on this issue (some pun intended); and, as is his usual, remonstrated once again that I was wrong and that he was always right.

  13. 4

    link to

    Several justices asked whether barring gene patents would deter innovation by stripping companies of legal protection for their research.

    “Why would a company incur massive investment if it can’t patent?” Justice Antonin Scalia asked.

    Justices Sonia Sotomayor, Stephen Breyer and Anthony Kennedy all asked about a middle ground suggested by the Obama administration. The government says the court should void parts of Myriad’s patents while leaving open the possibility that other aspects will be upheld.

    The administration says Myriad isn’t entitled to a patent on “isolated DNA,” which the government says is merely a snippet of the genetic sequence as it appears in the body. The administration says Myriad might be entitled to a patent on so- called cDNA, which involves a greater level of human manipulation.

    Deep stuff. From a chemical perspective, of course, there is absolutely no difference between a “cDNA” and “DNA”. Both are nucleic acid polymers comprising deoxynucleotides. The “c” in cDNA merely describes how the sequence of the nucleotides was determined. Does an eligible cDNA become ineligible subject matter if the cDNA sequence later appears “naturally” in a human? Or do the chromosomes of other organisms also possess this magical power of rendering patented subject matter ineligible?

  14. 3

    I remember seeing statistics showing that most patents aren’t even held in force for the entire term duration – a lot of patents are left to expire (the last renewal fee not being paid). What are the latest stats on this?

  15. 2

    You know what, I just figured it out. The 6 month late allowance pushes it up that extra half year. Makes sense.

  16. 1

    Why 3.5, 7.5 and 11.5, especially now that the period is 20 years? Why not 4, 8 and 12? I do like that the most expensive hike doesn’t come until the last renewal – it will convince companies that aren’t getting anything out of the patent that it’s not worth keeping it anymore.

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