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Volume XIII, Number 32


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America Invents Act Update

As we have previously reported, the America Invents Act (H.R. 1249) (the “Act”) was enacted last September. The U.S. Patent and Trademark Office (“the Office”) has been active over the past weeks proposing rules to implement certain provisions of the new law. While these proposed rules are currently open for comment and subject to change, they provide insight into the direction the Office is heading. Outlined below are some of the highlights of the Office’s activity.

First-to-Fileeffective March 16, 2013

The Act moves the U.S. from a first-to-invent system to a first-to-file system.  In conjunction with the Office’s new fee setting authority under the Act, the Office has proposed increases to filing fees. The combined filing, search, and examination fee for a nonprovisional application increases by $590 to $1,840 for large entities. The design application filing fee increases by $650 to $1,180 for large entities. The proposed fee increases would take effect in advance of the March 16, 2013 effective date for first-to-file.

While March 16, 2013 is still over a year away, the impending changes will impact decision-making for provisional applications filed on or after March 16, 2012. Although there is still a one-year window for formalizing the provisional application, it may be desirable to formalize by March 15, 2013 in order to remain under the current first-to-invent regime.

Once first-to-file takes effect, it will be beneficial to have all internal processes streamlined for quick and efficient disclosure of inventions to patent attorneys. Now is a good time to evaluate and improve those processes.

Prioritized Examinationcurrently in effect

For an additional $4,800 fee, applicants can file a request to have their application examined out of turn. Over 1,500 requests for prioritized examination have been granted since this provision has taken effect, with the Office striving for final disposition of the application within one year. In the initial five months of this program, nearly 60 applications have been allowed and over 900 applications have received first Office actions. Under the proposed new fee schedule, the fee for requesting prioritized examination is reduced to $4,000 for large entities.

Post-Grant Review

A new post-grant review system will be created that will expand the ability to challenge the validity of granted patents. Proposed rules for these proceedings are currently open for comment, and should be finalized prior to September 16, 2012. The fees for requesting these proceedings are perhaps the most noteworthy aspect of the proposed rules.

Post-Grant Review - applies to patents issued from applications having an effective filing date of March 16, 2013 and later

Available during the first nine months after patent grant for challenges on nearly any ground. The proposed fee starts at $35,800 and increases based on the number of claims for which post-grant review is sought.

Inter Partes Review - effective September 16, 2012 and applies to all patents regardless of the application filing date

Available more than nine months after patent grant for adversarial challenges based on prior art patents and printed publications. The proposed fee starts at $27,200 and increases based on the number of claims for which inter partes review is sought. This proposed fee is significantly higher than the current fee of $8,800 for inter partes reexamination.

Ex Parte Reexamination - current ex parte reexamination provisions remain effective

Available anytime after patent grant for non-adversarial challenges based on prior art patents and printed publications. The proposed fee is $17,760, which is significantly increased from the current fee of $2,520.

Supplemental Examination – effective September 16, 2012 and applies to all patents regardless of issue date

This provision allows a patent owner to ask the Office to correct, consider, or reconsider information for an issued patent. For example, a request for supplemental examination might be used to have a piece of prior art that was not considered during prosecution of the patent considered and made of record. The patent owner need not assert that the new information raises a substantial new question of patentability.  Information in the request is not limited to patents and printed publications. A fee of $7,000 is proposed for requesting supplemental examination.  If the Office determines there to be a substantial new question of patentability, an additional $20,000 fee will be charged for the ensuing reexamination. The patent cannot later be held unenforceable on the basis of information submitted in the request. 

Transitional Post-Grant Review for Business Method Patentseffective September 16, 2012 and applies to any business method patent regardless of issue date

The Office has issued proposed rules establishing and implementing a transitional post-grant review proceeding for the review of the validity of business method patents.  Petitions for post-grant review under the transitional review proceeding can only be filed by persons who have been sued for infringement or have been charged with infringement of the patent for which review is requested. The proposed fee starts at $35,800 and increases based on the number of claims for which this review is sought.

Pre-issuance Prior Art Submissions by Third Parties effective September 16, 2012 and applies to any patent application regardless of filing date

A third party will be able to submit prior art publications for consideration during prosecution of an application if the prior art is submitted timely. These submissions can be made anonymously.  The third party will have until the later of (1) six months after the date of publication of the application; or (2) the date of the first rejection. If a notice of allowance is issued before either of the foregoing events, the third party will no longer be able to submit prior art. Therefore, third parties should not delay in submitting relevant prior art. Consideration should be given to regularly monitoring application publications by key competitors and technology areas. The proposed fees for this procedure appear reasonable relative to other proposed fees, with no charge for a first submission of three or fewer prior art documents. The fee for submitting every ten additional prior art documents is $180.

Proposed New Fee Schedule

The Office has proposed a complete new fee schedule. In addition to fees already discussed above, there are other noteworthy increases proposed. The fee for each independent claim in an application in excess of three increases 84% to $460, while the fee for each claim in excess of twenty increases 67% to $100. The fee for a Request for Continued Examination will increase by 83% to $1,700. The current Appeal fee increases 142% to $1,500, and an additional fee of $2,500 for proceeding with an appeal has been proposed. Maintenance fees are proposed to increase 42%, 26%, and 61%, respectively, for the fourth, eighth, and twelfth year fees.

©2023 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume II, Number 55

About this Author

Richard Kaiser, Michael Best, patent prosecution lawyer, inter partes review legal counsel,

Rich has a strong track record in intellectual property law, specializing in all stages of the patenting process for mechanical arts and technologies. He helps clients build patent portfolios, avoid or invalidate competitor patents, and defend against infringement claims.

Through his extensive experience with utility and design patents, Rich has become a trusted, long-term business partner to producers and manufacturers. Rich works closely with clients, providing meaningful guidance on their U.S. and international patent strategies. Clients...

Brian Marstall, Michael Best Law Firm, Intellectual Property and Patent Attorney

Brian’s practice is dedicated to obtaining robust patent protection for his clients’ innovation and developing strategies to minimize their patent infringement risk.

Brian has significant experience counseling clients with respect to a wide range of intellectual property issues, including patentability, clearance, and invalidity of utility and design patents. He regularly represents clients in the mining and heavy manufacturing industries, and he has significant experience in technologies including underground and surface mining machines, ...