On February 14, 2013, the PTO published extensive Examination Guidelines for examination of applications filed after March 16, 2013, under 102 and 103 as amended by the AIA. Given the debates, if not confusion, that arose following the publication of the proposed rules with public comments regarding certain provisions of 102, these guidelines should provide some clarity as we prepare to go “out of the gate” after March 16th. Pay particular attention to the last section, which discusses “transition applications.” Happy Valentine’s Day!
Archive for the ‘AIA Patent Reform’ Category
While this is primarily a biotechnology patent law blog, the USPTO’s high level of rule making activity deserves attention, as it will affect us all after the September 16th deadline for implementing many of the new features of the AIA passes. Today, the PTO publishes over two hundred pages of regulations, guidelines and “Rules of Practice’ regarding Inter Partes Review, Post-Grant Review, the Transitional Program [to attack] Business Method Patents, Supplemental Examination (to “purge inequitable conduct”) and the new procedures by which a person having rights to the invention can file an application in lieu of the inventor(s).
Below are links to the six USPTO Federal Register Notices –
In an introductory post on the USPTO’s proposed rules: “Changes to Implement Micro Entity Status for Paying Patent Fees,” 77 Fed. Reg. 31806 (May 30 2010), my partner, Gary Speier, spent some time on new 35 USC 123(a), which defines a micro entity as an applicant (an “individual”) who qualifies as a small entity under 37 CFR 1.27; has not been named as an inventor on more than four previously filed applications, not counting foreign filings or provisionals, did not, in the year previous to the year in which the fee is paid, have a gross income greater than three times the median household income of the preceding year, and has not assigned and is not under an obligation to assign to a higher income entity.
Micro entities will receive a 75% reduction in fees related to filing, searching, examining, issuing and appealing patent applications and maintaining patents. Remember, micro entities are individual inventor-applicants but, in a situation in which they are university employees, and assign to their universities, it is the universities who will be paying the patent fees, and that will benefit from the micro entity status of their employees. Or will they?
A guest post from Gary Speier, shareholder with Schwegman, Lundberg & Woessner.
Last week, the USPTO published a Federal Register notice proposing rules for implementing certain provisions of section 10 of the America Invents Act related to micro entities. (A copy of this notice is available here of at the end of this post.) The proposed rules set forth the requirements for qualifying as a micro entity and the procedures for claiming micro entity status, paying patent fees as a micro entity, notifying the USPTO of any status change, and correcting erroneous payments. In a separate rulemaking expected this summer, the USPTO will be proposing to set or adjust fees using its new fee-setting authority under AIA section 10. Micro entities will receive a seventy-five percent reduction in those fees related to filing, searching, examining, issuing, and appealing patent applications and maintaining patents. Comments on today’s notice, “Changes to Implement Micro Entity Status for Paying Patent Fees,” are due July 30.
Section 61 of the Internal Revenue Code (IRC 61, 26 U.S.C. § 61) defines “gross income,” which is the starting point for determining which items of income are taxable for federal income tax purposes in the United States. Section 61 states that “except as otherwise provided in this subtitle gross income means all income from whatever source derived”. The United States Supreme Court has interpreted this to mean that Congress intended to express its full power to tax incomes to the extent that such taxation is permitted under Article I, Section 8, Clause 1 (the Taxing and Spending Clause) of the Constitution of the United States and under the Constitution’s Sixteenth Amendment.
If median income information is not available for the prior year until the end of the following year, it could make it difficult to determine if a client qualifies for micro entity status. I personally propose that the PTO independently publish (or provide direct access to) the “amount.” If this cannot be done on Jan 2 for the preceding year, they should require that we should work off the data from two years prior. Of course, only folks in a window of gross income about $135-165 (3 x $45-55K) would reasonably have cause for concern. Note the YR 2010 median household income was $49,445. (See http://www.census.gov/hhes/www/income/data/index.html.)