Archive for the ‘USPTO Rules re 2AIA Patent Reform’ Category

USPTO Proposes Rules To Implement Micro Entity Patent Fee Provisions Of AIA

Monday, June 4th, 2012

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


New Standard in Effect for Granting Inter Partes Reexaminations

Wednesday, September 21st, 2011

USPTO ISSUING NEW RULES CONCERNING INTER PARTES REEXAMINATION — On September 16, after the President signed the Leahy-Smith America Invents Act into law, the USPTO announced new rules governing the provisions of the Act relating to Inter Partes Reexamination that went into effect immediately upon enactment.  For all Inter Partes Reexamination requests filed on or after September 16, 2011, the “reasonable likelihood” standard replaces the substantial new question (“SNQ”) standard for granting requests.  The rules also govern the phase out of Inter Partes Reexamination requests as the new Inter Partes Review process goes into effect on September 16, 2012.  The new rules are being published in the Federal Register (and are available below).


PTO Launches Pilot Program to Speed Patenting Green Technologies

Monday, December 14th, 2009

On December 8th, the Patent Office implemented a pilot program in which an applicant may have an unexamined application filed before December 8, 2009 made special upon a showing that the putative patent would “materially enhance the quality of the environment by contributing to the restoration or maintenance of the basic life sustaining natural elements.” 74 Fed. Reg. 64666 (Dec. 8, 2009) (a copy is attached at the end of this posting). The petition to make special must state the basis for the special status, but there are a lot of them. The notice lists them by classification, and they fall broadly into alternative energy production, energy conservation, environmentally friendly farming (including all of “plants and plant breeding ” – 800 (!)) and environmental purification, protection or remediation. The subclasses cover everything from swimming pool heating to wind-powered ships. Of course, biotech faves like “biofuel,” “toxic material clean-up,” and “recycling” are included, as well as “using microbes and enzymes [to destroy toxic materials], and “genetically engineered organism” [to produce fuel, I assume]. Somewhat more exotic ones include “emission trading” (a business method?), “drag reduction,” and nuclear power. One area I have worked in but couldn’t quite find was “herbicide alternative” or some such, although “fertilizer alternative” is present. Maybe this would fall within “yield enhancement” but so would quite controversial inventions like Bt corn or glyphosate-resistant soybeans.

Of course there are lots of strings attached. The program has a limit of 3000 petitions, which must be filed before December 8, 2010. The claims must be directed to a single invention and there can only be three independent and twenty total claims (shades of the recently departed rule package?). Both this Green Pilot program and the Abandon to Advance Pilot Program at least exhibit a startling level of creativity for an Office not known for that trait, but I worry that the resources may not be there to expeditiously process all these petitions. If you try it (and I intend to), please let me know if you like it!

74 FR 64666.pdf