Last September, years of effort by the patent community led to passage of the America Invents Act (AIA). The AIA’s sweeping reforms include significant changes to patent office practice, new definitions of prior art, and fee-setting authority for the U.S. Patent and Trademark Office (USPTO). These reforms have the potential to enhance and transform USPTO operations and, in turn, improve the patenting experience for inventors.
While the USPTO and the public are currently tackling a daunting array of rules packages to implement the AIA, the USPTO’s proposed fees have come under attack — from within the patent community. It is disappointing that users of the patent system would oppose the USPTO’s authority to recover its costs, yet nevertheless expect the patent office to fulfill its expanded responsibilities under the AIA .
There is no dispute that the USPTO should have sufficient funding to operate efficiently and effectively. During the years of wrangling over more controversial elements of the AIA, the vast majority of stakeholders agreed that USPTO fee diversion should be prevented. The AIA doesn’t go that far, but it does give the USPTO the power to set fees, a power that was also widely supported (particularly if the USPTO could keep those fees). The USPTO also succeeded in obtaining an appropriation from Congress sufficient to recover its fees, so it seems that for this fiscal year at least, the stars have aligned.
Under the AIA, the USPTO is required to set fees to recover aggregate costs. In an initial fee proposal, the USPTO did just this, with some adjustments designed to encourage certain activities such as filing new patent applications. While some have raised concerns over whether the method for calculating costs or the value proposed for the USPTO reserve fund is optimal, few dispute the USPTO’s goals in establishing them, i.e. to effectively and efficiently examine patent applications and review issued patents.
The USPTO has already put in place a number of procedures required by the AIA, such as accelerated examination and the new threshold for granting inter partes reexamination. In the upcoming months, the USPTO will begin to conduct an array of new post-issuance proceedings. Just as the patent community should have the opportunity to provide input on how these new procedures and proceedings work, we also need to work with the USPTO on how much they should cost. Sufficient funding at the right stages of the patent process is a requirement for a well-functioning patent system.
Members of the public should be encouraged to share views regarding specific fees proposed by the USPTO as part of the overall framework for the USPTO to recover its costs. As this process moves forward, the USPTO is expected to publish a final proposed fee schedule in June so the public can submit comments directly to the USPTO. By doing so, those with concerns about the fees should constructively engage in the fee setting process to help the USPTO help itself. But we shouldn’t expect the USPTO to get the job done without the fees.