Pres. Obama plans to sign the patent reform bill on Friday, September 16. This means that several parts of the legislation will go into effect shortly.
The PTO will be granted fee-setting authority (although not necessarily the right to keep all collected fees). New fee amount will have to go through notice-and-comment rule-making as described below.
The PTO will implement its previously planned Track I Accelerated Examination. For a fee of $4,800/2,400, up to 10,000 applications during the first fiscal year will be placed on a fast track examination path having an office-wide goal of disposal within 12 months of granting accelerated status.
A new fee level for a “micro-entity” should go into effect immediately upon enactment. Micro-entities are entitled to a 75% reduction in certain PTO filing fees. To qualify as a “micro-entity,” certain conditions must be met.
For unassigned applications, the entity must not include any inventors that have been named on 5 or more patent applications. Thus, “micro-entities” are newer inventors. The application must not be licensed or the inventors must not be legally obligated to license or assign the application. Each inventor must have an income of less than 3 times the average gross income reported by the Department of Labor for the previous calendar year.
For assigned applications, the inquiry is similar. None of the inventors must be named on 5 or more patent applications. The application can only be assigned to an entity with 5 or fewer employees. And the assignee must have an income of less than 3 times the average gross income for the previous calendar year.
On Sept. 26, a 15% PTO surcharge on patent fees goes into effect to aid the PTO’s funding crisis. During a webinar yesterday sponsored by Foley & Lardner LLP, Patent Commissioner Bob Stoll announced a plan to hire 1500 additional patent examiners. As noted by Hal Wegner, however, the PTO is currently funded by a continuing resolution of Congress that expires at the end of the current fiscal year on Sept. 30. Because fee diversion was not ended by the new law, the agency is still at the mercy of Congress for its continued operations into FY2012.
The new legislation will require significant rule-making by the PTO to implement the various sections. The PTO must go through notice-and-comment rule-making procedures required by the Administrative Procedure Act to implement such new rules. Thus, the PTO has set up a new website for this purpose: http://www.uspto.gov/patents/init_events/aia_implementation.jsp. The new rules will be published in the Federal Register and public comments are needed to promptely enact them.
Several other aspects of the law also go into effect immediately, including the preclusion of multiple, unrelated parties in one patent suit, changes to the standard for granting reexamination requests, elimination of the best mode as a defense to infringement, preclusion of patenting of tax strategies, virtual patent marking, and the requirement of actual injury for false marking suits.