Did You Know: Reducing USPTO Fees

The America Invents Act requires the USPTO Director to consider reducing Patent Office fees each fiscal year.  In particular, the Act requires that the Director:

(1) shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees [subject to USPTO Fee Setting Authority] and (2) after the consultation required under paragraph (1), may reduce such fees.

This requirement is not codified in the U.S. Code because it is part of the temporary fee-setting-authority granted by the AIA for 7-years and then extended this year by the USPTO FEES Act for an additional 8-years (ending in October 2016).

 

25 thoughts on “Did You Know: Reducing USPTO Fees

  1. 3

    Filing a Notice of Appeal should be free, or at least the fee should be refunded if the applicant prevails at any stage of the process, whether on preappeal, prosecution reopened by Examiner before forwarding to the PTAB, or examiner reversed at least in part by the PTAB. Why does the applicant need to pay when it’s established that the Examiner screwed up?

  2. 2

    Here’s an idea: Super Fast Track.

    For $100,000, the PTO will Examiner your patent application and, if there is grantable subject matter and you adhere to the (necessarily tight) deadlines for responses and fee payment, you get an issued patent in 15 business days. 20 claims total, no more than three independent claims. IDS, request and fee must accompany the filing. No non-publication requests (application as filed is made public immediately).

    1. 2.1

      Not sure that is practicable in terms of actually getting the NOA and the publication done in 15 days guaranteed simply because the applicant may drag things out in terms of deciding x y or z or a reference may need to be found by the reference getting people from some other institution. But with limited exceptions it seems fine. Seems easier to just assure them an action in 15 days, 15 days for response, 15 day to final action and again with limited exceptions. And I don’t see any need for it to be more than 30-50k unless they’re just doing it to raise $$$.

      1. 2.1.1

        You don’t request Super Fast Track unless you have your sh t together. That’s the whole point. The $100,000 can certainly be a money-raiser for the PTO. But it ain’t no rubber stamp.

        Forgot to add: telephone interviews will be the first order of business, to establish the meaning of the claim terms and to establish what limitations the applicant knows to be in the prior art versus what’s new. And all interviews will be recorded and made available to the public as audio recordings (on PAIR) immediately after they take place.

        1. 2.1.1.1

          “And all interviews will be recorded and made available to the public as audio recordings (on PAIR) immediately after they take place.”

          Trying to get a foothold into the system of your proposed system eh? I don’t know if that should be mandatory but I certainly don’t mind it.

          Otherwise yes I agree it should likely be a req to have an interview to bring the office up to speed best as possible if you want to do this quickie, I was going to suggest it but I figured just leave it as optional. Might also want to discuss restrictions that would happen, and perhaps pg limits on the application (can’t have a 200 pg spec with 100 embs that are all different sub-species/species/sub-combo-combos etc. which all get claimed).

        2. 2.1.1.2

          man mm you’re going to lurve the “revised guidance” from the office on 101. They try to make the “alice step 2a” as it is called into somewhat of a joke that will basically spit out the old “useful concrete and tangible” test’s results of old every single time, except even more generously. At least as far as I can tell. Basically they’re trying to undo Alice/Bilski/Benson through administrative fiat.

          I cannot understand at present how they think this new guidance squares with any of Benson/Alice/Bilski as all of those would be held entirely eligible under this guidancelol.

          1. 2.1.1.2.1

            And I quote “If the recited exception [here meaning the excepted subject matter under discussion] is integrated into a practical application, then the claim is eligible” PERIOD. It’s literally the old “useful concrete and tangible” boiled down to “a practical application” which is arguably an even more broad category than the previous “testlol”.

            1. 2.1.1.2.1.1

              Note that is only supposedly applicable for “abstract ideas” category, but not for “lawls of nature and natural phenom” which will be held to the same old guidance as before.

              And further there is supposedly a “groupings of abstract ideas” that are pre-determinedlol, in even identifying abstract ideas (because that’s supar hard). If the abstract idea doesn’t fall in one of the IDed groupings then they should not be treated as abstract ideas (except in rare circumstancelol).

              Finally, it seems that they’re at least trying to put the old lawl into the analysis by adding on a still yet another sub-test (call it 2a 1 a) into the sub-test (call it 2a 1) under step 2a that they just made. This 2nd sub-test under the first sub-test then tries to define “integration into a practical application” as being a meaningful limitation on the judicial exception (more than a mere drafting effort). Which basically turns the whole original sub-test on its head and inserts needless confusion into the “analysis”.

              A complete byzantine bureaucratic backwards sht show.

              They rely on Vanda case for this.

              1. 2.1.1.2.1.1.1

                Too funny 6.

                Not only are you late to the party, but you post in a stream of conscience mode indicating that you have just now read protocol published last week.

                I also find it funny that you pick up on:

                inserts needless confusion into the “analysis”.

                A complete byzantine bureaucratic backwards sht show.

                But don’t realize the driver that you yourself included:

                Finally, it seems that they’re at least trying to put the old lawl into the analysis by…

                Director Iancu was explicit that the Common Law law development of 101, unleashed by the Supreme Court has already created contradictory case law.

                The problem that you see about “Byzantine” and “backwards sht show” is that the Director, even knowing the contradictions, attempts to use both sides of the contradictory case law.

                You can’t get a different result doing the same thing. You cannot say “that sht is contradictory,” turn around and include the contradictions, and expect clarity.

                He tried to take a layered approach (and did it dawn on you yet 6 how the Berkheimer effect is in play with that layered approach?) and with the layers tried to constrain the contradictions of the courts, but as noted, this will make no one happy in the end.

                Those wanting to use 101 as a weapon will not be happy (but won’t be stopped), and those wanting to stop the contradictory Common Law approach won’t be happy either, because this protocol does not go far enough in either what it does not in the reach of its effects.

                1. the Common Law law development of 101, unleashed by the Supreme Court has already created contradictory case law.

                  Where’s the “contradiction” that Iancu is having so much difficulty with?

                2. That cannot be a serious question.

                  Oh wait, this is from Malcolm.

                  I am being redundant then.

                  Kidding aside, I have to wonder if you are doubting that Iancu is casting shade on the fact that Common Law law writing has resulted in contradictions.

                  Are you disputing that such is the case?

                3. ” that you have just now read protocol published last week.”

                  Yeah I skipped it and was just going to wait on the O-fficial trainin.

          2. 2.1.1.2.2

            They try to make the “alice step 2a” as it is called into somewhat of a joke that will basically spit out the old “useful concrete and tangible” test’s results of old every single time, except even more generously. At least as far as I can tell. Basically they’re trying to undo Alice/Bilski/Benson through administrative fiat.

            Oh, I know all about it. The li’l fresh-off-the-farm patent attorneys who do all the work in the sooper deep techno look-up table arts are very excited by it. Which is what Iancu wants.

            1. 2.1.1.2.2.1

              I don’t know I guess we can see how it’ll work out, but overall the levels of confusion are enormous. I can’t say that I didn’t predict something similar to this happening when Alice “guidance” was first drafted as a bunch of hard and fast “steps” 1, 2, 2a, 2b etc. But I believe I did. Literally the analysis is fairly simpler than all that.

          3. 2.1.1.2.3

            I cannot understand at present how they think this new guidance squares with any of Benson/Alice/Bilski as all of those would be held entirely eligible under this guidancelol.

            Don’t worry! I’m sure David Boundy is on this.

            LOLOLOLOLOL

    2. 2.2

      Why?

      Notice of patent pending is sufficient for most all reasons for “early grant.”

      I just don’t see a level of compelling need for your hyper-fast idea.

      1. 2.2.1

        Notice of patent pending is sufficient for most all reasons for “early grant.”

        Try again in English. I have no idea what you’re getting at here.

        I just don’t see a level of compelling need for your hyper-fast idea.

        It doesn’t have to be “compelling” to you. It needs to be compelling for serious people who have a patentable invention, who know how to claim it properly and support it with a specification, and who are willing to pony up the $ so they can get their patent in a few weeks rather than months or years.

        1. 2.2.1.1

          Do you understand how the “patent pending” designation works?

          (my sentence was in plain English – enough so that any actual patent attorney would not try the lame ‘say it in English, I don’t understand what you are getting at” line of C R P)

          1. 2.2.1.1.1

            Do you understand how the “patent pending” designation works?

            Go ahead and explain your beliefs, Billy. Use English and declarative sentences.

            1. 2.2.1.1.1.1

              I should not have to explain ANY “beliefs,” Malcolm.

              If you do know, then YOU wouldn’t need to ask.

              I note as well that you are just kicking up dust because there is NO substantial level of compelling need for your idea (and clearly, your idea will go no further).

              Maybe YOU should work on that “explain your beliefs” thing if you want your ideas to actually be taken seriously.

              1. 2.2.1.1.1.1.1

                I should not have to explain ANY “beliefs,”

                He’s a very serious person, folks.

  3. 1

    To me, not enough attention has been given to the fee setting activities (importantly due in part to any authority to set fees comes with caveats).

    1. 1.1

      …some might call the results of this lack of oversight “forsight” — but a good Ends (keeping examination afloat) is not excused by questionable Means (blowing up the zero balance in the aggregate mechanism that serves a check on the authority granted to the Office).

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