AIA Monitor

Today is the last day for submitting your written comments to the Patent Public Advisory Committee (PPAC) regarding the USPTO patent fee proposals under Section 10 AIA to ensure that they will be taken into consideration.  USPTO management and tha PPAC have publicly stated that all written comments will be taken into consideration together with the live testimony given at the 15 and 23 February public hearings this month.

The USPTO has posted a webcast of the entire February 15 hearing in which the PPAC took testimony from representatives of the Intellectual Property Owners’ Association (IPO), the American Intellectual Property Law Association (AIPLA), the Intellectual Property Law Section of the American Bar Association (ABA) and the New York Intellectual Property Law Association.

The executive director of the IPO, Herb Wamsley, questioned whether the proposed substantial fee increases are necessary and appropriate in view of the 15% fee increase already implemented under the AIA.  He expressed the view that there may be opportunities to increase efficiency for the new procedures introduced by the AIA.

The chairman of the AIPLA board of directors, Q. Todd Dickenson, emphasized that improving patent quality is more important than quickly reducing pendency times.  Setting high fees for post grant review, inter partes review and supplemental examination is seen as counter-productive toward that goal.  He indicated that the AIPLA would favor spending less money on reducing pendency times and building up a reserve fund to make more money available for procedures and resources aimed at improving patent quality.

The representative of the IP Section of the ABA, Bob Armitage, expressed the view that the high cost of the new procedures introduced under the AIA appears to be contrary to the Congressional intent that the new procedures be widely adopted.  He also suggested that the high cost estimates for the new procedures may be due to drafting proposed rules for those procedures that are more complex than necessary and, therefore, place too many demands on USPTO staff, echoing comments made by Herb Wamsley and implied in some of Todd Dickenson’s comments.

The representative of the New York IP Law Association, Peter Thurlow, agreed with the previous speakers that there was a risk of continued fee diversion if too much money is put in a reserve fund and suggested that part of the fee for post grant review procedures be refunded in the event that the parties reach settlement.

There appears to be a consensus among the first three speakers, which together represent nearly the entire US patent system user community, that the proposed fees are too high, particularly for the new procedures introduced by the AIA, and that the USPTO should look for ways to streamline the newly introduced procedures to reduce cost.

The USPTO solicitor general, Bernie Knight, issued an opinion explaining the USPTO’s authority for establishing fees under Section 10 AIA and under 35 U.S.C. §41(D)(2)(a).  That opinion makes clear that fees proposed under §41, such as the proposed fees for ex parte reexamination, inter partes review and post grant review, cannot be subsidized by fees charged for other procedures.  Since the PPAC is tasked with reviewing the USPTO’s proposals under Section 10 AIA, The PPAC’s primary interest will be in your views regarding the effect of cost increases on the demand for USPTO services, which will affect the USPTO’s revenue projections, and the effect of the distribution of costs on US public policy objectives.  My previous post provides some suggestions regarding the latter.

I encourage you to submit comments to the PPAC today regarding the wisdom, or lack of wisdom, of specifically proposed fees from a US public policy perspective via fee.setting@uspto.gov.  If comments are received late, the USPTO director, Mr. Kappos, said at the 15 February hearing that they will try to also take those comments into consideration.