Leahy-Smith America Invents Act Implementation
Click on the map for 2012 Fall Roadshow details
MESSAGE FROM JANET GONGOLA, PATENT REFORM COORDINATOR: USPTO Publishes Final Rules Implementing the Derivation Provision
On September 11, 2012, the USPTO published final rules in the Federal Register implementing the derivation provision. This provision becomes effective on March 16, 2013.
Changes To Implement Derivation Proceedings (77 Fed. Reg. 56068, Sept. 11, 2012)
In addition to these final rules for derivation proceedings, the USPTO previously published General Administrative Trial Final Rules and a Trial Practice Guide in the Federal Register that contain more information about derivation proceedings. Both documents are available here:
- General Administrative Trial Final Rules (77 Fed. Reg. 48612, August 14, 2012)
- Trial Practice Guide (77 Fed. Reg. 48756, August 14, 2012)
MESSAGE FROM JANET GONGOLA, PATENT REFORM COORDINATOR: USPTO Establishes Patent Ombudsman Program for Small Business Concerns
The America Invents Act requires the USPTO to establish and maintain a Patent Ombudsman Program for Small Business Concerns using its existing resources. The AIA specifies that the program provide support and services relating to patent filings for small business concerns and independent inventors and be available by September 16, 2012. In accordance with the AIA, the USPTO has established such a program to be known as the Program for Small Business Concerns:
Program for Small Business Concerns
In forming the new Program for Small Business Concerns, the USPTO has combined the efforts of the existing Office of Innovation Development and the existing Patents Ombudsman Program. This new Small Business Concerns program will provide through the two offices a full range of services at all stages of the patent process, including before an application is filed, while an application is pending at the USPTO, and after a patent has issued. Here is more information about the Office of Innovation Development and the Patents Ombudsman Program:
MESSAGE FROM JANET GONGOLA, PATENT REFORM COORDINATOR: USPTO Releases Roadshow Presentation Materials
Today, on September 10, 2012, the USPTO starts its roadshow tour in Minneapolis, Minnesota to discuss new legal provisions and our implementing final rules that go into effect on September 16, 2012. We are pleased to be visiting seven additional cities across the United States as well, including Alexandria, Va., Atlanta, Denver, Detroit, Houston, Los Angeles, and New York City. To help you make the most of the roadshows, the USPTO is releasing is roadshow presentation materials. Additionally, we are releasing a reference guide that provides further details about the new provisions of law and final rules. Both documents are available here:
- Roadshow Slides
- Reference Guide to Statutory Provisions and Final Rules Effective on September 16, 2012
- The Patent Review Processing System (PRPS) Video
More information about the roadshows, such as venues and an agenda, is available at the link below. Also, we will be webcasting live from Minneapolis; Alexandria, Va.; and Los Angeles. Webcast access info is available at the link below. Don’t miss these opportunities to learn how to navigate the new patent law from agency experts; there will be multiple opportunities to interact with them throughout the day for our live and webinar audiences.
MESSAGE FROM JANET GONGOLA, PATENT REFORM COORDINATOR: USPTO Publishes Proposed Patent Fee Rules in the Federal Register and Releases Companion Fee Related Documents
On September 6, 2012, the USPTO published proposed rules in the Federal Register setting or adjusting fees for patent related services. In proposing patent fees through this rulemaking, the agency is exercising its fee setting authority established under Section 10 of the AIA. The proposed patent fee rules as seen in the Federal Register are available here:
Patent Fees Proposed Rule (77 Fed. Reg. 55028, September 6, 2012)
Additionally, the USPTO announces the release of several fee related documents to assist with understanding the process and analysis that went into developing the proposed patent fee rules set forth in the Federal Register publication. These fee related documents include: (i) an “At A Glance” summary of proposed patent fees; (ii) a Regulatory Impact Analysis; (iii) a table of patent fee changes; (iv) costing methodologies; (v) elasticity estimates; (vi) Initial Regulatory Flexibility Act tables; and (vii) ten aggregate revenue tables with instructions.
At A Glance Summary: This document summarizes the proposed patent fees for services offered by the agency, which are set forth in detail in the Federal Register notice.
Regulatory Impact Analysis: The Office prepared a Regulatory Impact Analysis (RIA) to analyze the costs and benefits of the agency’s proposed patent fees over a five-year period, as required by the Office of Management and Budget. This analysis includes a comparison of the proposed fee schedule to the current fee schedule (baseline) and to three other alternatives. The Office considered both monetized and qualitative costs and benefits.
Table of Patent Fee Changes: The Office prepared this table to summarize the changes from the current patent fee schedule as compared to the proposed patent fees. This table includes all current large and small entity fee amounts; all proposed large, small, and micro entity fee amounts; and the percent change between the current and proposed large entity fees. The table also displays the historical unit costs for fees for FY 2009 - FY 2011.
Costing Methodologies: This document provides additional detail on the costing methodologies used to derive the historical costs of certain activities, which was used to inform the fee setting and is also outlined in the Table of Patent Fee Changes.
Elasticity Estimates: When developing fee forecasts, the Office estimates the elasticity of price changes, i.e., how applicant behavior might change with different price changes for the various patent services. The Office prepared this document to describe the statistical examination of the elasticity. The document summarizes the results of this analysis and provides detail on how elasticity was determined for certain user fees.
Initial Regulatory Flexibility Act Tables: The Office created fee tables that show all current large and small entity fee amounts; all proposed large, small, and micro entity fee amounts; and the percent change between current and proposed fee amounts for each alternative discussed in the Initial Regulatory Flexibility Act analysis. These tables are also referenced for each alternative in the RIA.
Aggregate Revenue Tables: The Office developed out year revenue estimates for the proposed patent fees and each alternative presented in the RIA. These tables show both fee amounts and workloads for every USPTO fee included in the proposed fee structure and each alternative. The fee amounts and workloads are multiplied to determine an estimated revenue amount for each USPTO fee. The table is summarized to show the estimated aggregate revenue through FY 2017. These tables are provided in both .pdf and Excel formats for ease of use, and step-by-step instructions for reading the tables are provided.
- Fee Setting At a Glance
- Regulatory Impact Analysis
- Table of Patent Fee Changes
- Costing Methodologies
- Elasticity Estimates
- Initial Regulatory Flexibility Act Tables
- Aggregate Revenue Table for Proposed Patent Fees in NPRM [PDF | Excel]
- Aggregate Revenue Table for Current Fees [PDF | Excel]
- Aggregate Revenue Table Across the Board [PDF | Excel]
- Aggregate Revenue Table for Fees Set at Cost Recovery [PDF | Excel]
- Aggregate Revenue Table for Preliminary Proposed Patent Fees from February 2012 [PDF | Excel]
- Instructions for Aggregate Revenue Tables
Lastly, the USPTO will discuss the proposed patent fee rules at AIA roadshows to be held in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City throughout September 2012. More information about the roadshows, including venue locations and an agenda, can be found here:
