• Find the point of novelty
  • Broadcast your rights
  • Turn ideas into assets
  • Drive forward
  • Draw the future

Category: Patent

Fee Changes at the Patent Office

Florida River, Colorado

The Patent Office has raised many of its fees.

The Office attempted to soften this fee increase by explaining that it is the first raise in almost three years, it nevertheless comes in the midst of a pandemic where many are struggling to meet their financial obligations. Larger companies may not be greatly affected, but smaller companies, start-ups (especially self-funded ones), and independent inventors are disproportionately impacted by these fee changes. It is somewhat disappointing to see Office continue with these changes despite the current economic situation of most Americans.

Nevertheless, the Patent Office is largely self-funded and budgeted, and it is not immune to rising operational costs. As a consequence of mandated internal reviews of fees, costs, and revenues, the Office determined that fee adjustments were necessary to adjust to increasing costs and to provide necessary resources for its internal operations. In setting fees, the Office attempts to not just cover its current costs but its projected costs for the next several years. Thus, the hike feels steep now because it is, in part, set to off-set future fees. Most fees increased by approximately 5 percent, though some increased by quite a bit more.

Below I cover the fees for some of the more-commonly used actions. There are a number of changes to fees that I have not included here (more info is available at this link).  I’ve quoted the below fees at the small entity rate.

Adjusted Fees

  • Provisional Application Filing Fees increased from $140 to $150
  • Utility Patent Application Filing Fees increased from $785 to $830
  • Track One Requests for Expedited Examination increased from $2,000 to $2,100
  • Rocket Docket requests increased from $450 to $800
  • Design Patent Application Filing Fees increased from $480 to $510
  • International Application Transmittal Fees increased from $120 to $130
  • International Application Search Fees increased from $1,040 to $1,090
  • International Preliminary Examination Fees increased from $300 to $320
  • Extensions for Responses increased $10 to $80, depending on the length of extension
  • Terminal Disclaimers increased from $160 to $170
  • RCE fees increased from $650 to $680
  • Notice of Appeals increased from $400 to $420
  • Petitions to Revive Abandoned Applications increased from $1000 to $1050
  • Utility Patent Issue fees increased from $500 to $600
  • Design Patent Issue fees increased from $350 to $370
  • 3.5 Year Maintenance Fees increased from $800 to $1,000
  • 7.5 Year Maintenance Fees increased from $1,800 to $1,880
  • 11.5 Year Maintenance Fees increased from $3,700 to $3,850
  • Maintenance Fee Surcharge (for late maintenance payments) increased from $80 to $250

New Fees

  • Non-DOCX Filing Surcharge is a new fee at $200. The Office is beginning to require patent application documents be filed in DOCX format. This surcharge will not go into effect into 2022, however.

Discontinued Fees

  • The Office dropped fees for a bunch of actions and reports that are very infrequently used.


Always Stay Humble And Kind

Last week I received a call from a prospective client in need of help prosecuting his patent application. The person had written the patent application themselves and had received a rejection. He asked me to draft a response to the Patent Office.

Overend Park, Durango, Colorado

 

I do this work all the time; it is called patent application prosecution. I know pretty well what my average cost is for this kind of work, and it exceeded his budget.  Further, in my experience, patent applications written by inventors require far more work than ones written by attorneys, which means the costs would likely continue to rise in this case. There are a lot of rules and pitfalls that an inventor doesn’t know about and will usually run afoul of when writing an application, and these then have to be fixed if the application has any hope of maturing into a patent. For that reason primarily, I don’t take on clients who have written their own applications anymore. I do caution them, however, that it will be difficult and expensive to get a patent, and so they should make sure that attorney they do hire discloses this to them.

The caller I spoke with last week fit this profile, and so I declined to represent him. I am fairly direct when I deal with clients. I always try to set expectations from the outset, because I don’t want them to be surprised with an outcome later on. I was direct with this client as well, but perhaps too direct; he told me later that he felt insulted, condescended, and violated, which was of course never my intent. And that is the reason for this post: I need to learn from this and to better appreciate and understand each client and their unique position. While I will always tell clients only the truth, I am reconsidering my manner of delivering that truth.

I asked the client for permission to post his feedback, but he did not respond to that request. However, I think it is worthwhile for all potential clients to understand why I am direct and why I set expectations. To that end, I am posting my response alone, with some information removed and changed. I wrote:

Thank you for this note. I am quite upset by the thought that I made you feel so poorly. I only meant to set your expectations for what is possible in your patent application. Most of my clients appreciate being told what the road ahead presents. Nevertheless, I must have been too blunt, and for that I am truly sorry in how it affected you. I will try to be mindful of this in the future, so thank you for the feedback. With your permission, I would like to post and respond to your comment on my blog for the benefit of others.

 

And now, I’d like to repeat what I said on the phone, as it is general advice that applies to all. Indeed, I wrote about this four years ago because it is an issue I have seen arise time and again.

 

Please be careful when selecting your attorney. Your case will require significant time and work, because all patent applications do. Beware any attorney who tells you otherwise – patent applications routinely cost $10,000 and take years to prosecute. The ability to successfully prosecute a patent application depends largely on the quality of the app as originally filed. And the ability to successfully prosecute an application that was written by the inventor is often reduced. I apologize if this felt like an attack on your writing abilities; it was not. The U.S. Supreme Court stated in 1892 in Topliff v. Topliff that a patent application “constitute[s] one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.” I first wrote about this nine years ago.

 

As I noted on the phone, when I have taken over a case written by an inventor, the work always ends up costing more than if I had done it from the beginning. For that reason, I don’t take on this kind of work anymore. That, and because I am currently very busy, is why I told you I cannot help you now.

 

Preparing a response to a rejection from the Patent Office involves a lot of uncertain work. It is likely 10-20 hours of work to file one response. And a response doesn’t automatically issue the patent; further responses are often necessary, especially in inventor-drafted apps. Again, as I explained on the phone, one’s ability to prosecute an application to grant is greatly dependent on the disclosure presented when the application was initially filed. If that disclosure is limiting, the chance of success in a patent application will be diminished, if it is possible at all. That work and risk translates into expense. Any attorney you interview should be honest with you about this process and the costs.

 

Indeed, I specifically recommended that with whoever you hire, make sure to ask them about the chances for patentability, the scope of potential patent protection, and the cost and time for getting there. You must make a reasoned business decision based on those factors when deciding whether to move forward or abandon any application.  Throughout the patent process, I advise all my clients of these factors so that they can make such decisions.

I concluded the note by offering to conduct another phone call to address this information only. I have not received a call back, however.



Podcast: Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Windy Point on Mt. Lemmon

Aaron Moncur of Pipeline Design & Engineering recently interviewed me for his podcast Being an Engineer.  We talk a little about my early engineering time, but mostly about the transition from engineering to law and the basics of patent protection. Please have a listen:

Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Pipeline Design and Engineering designs elegant products for its customers.  They are experts in the fields of mechanical engineering & product development.  Aaron hosts the Being an Engineer podcast as a forum for engineers and those who work with them to share and learn about how others solve problems engineers face each day, and about the delightful idiosyncrasies that make engineers breed unique.  Aaron graced me in as a past engineer.  I share some ideas about when you may think it is time to jump the engineering ship, how much fun Laplace Transforms can be, how to protect a new soda bottle design, and why the Patent Office expedites patent applications for those over 65.

 



Line Differences in Design Patent Applications

Mesquites in Late Spring

The scope of protection of a design patent is defined by the drawings presented therein.  In that way, design patents can often seem like a very simple or straightforward form of protection: show some drawings in an application, file it, get a patent a year later.  Not quite.

The Patent Office manual for examination plainly states:

“The necessity for good drawings in a design patent application cannot be overemphasized.  As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture.  An insufficient drawing may be fatal to validity … Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.” – MPEP 1503.01

The Patent Office quote indicates how important drawing quality is from a validity and examination standpoint, and acknowledges the subtle dangers in haphazard drawing generation.  However, to this should be added that good drawings will also drastically affect the strength of a design patent.

The creation of design patent drawings has to be undertaken very carefully.  The lines illustrating the design are shown in solid lines and broken lines.  Solid lines define the actual protected design, while the broken lines show contextual information.

Broken lines are most commonly used to show environment and to define the boundaries of the claimed design.  Broken lines may show environmental structure or a feature that the design fits onto or is located near, to show the structure in context in its environment.  Broken lines may show portions of a claimed design which are unclaimed.  In some cases, broken lines may illustrate claimed design, such as stitching and fold lines.  However, broken lines are not permitted for the purpose of identifying portions of a claimed design which are immaterial or unimportant.  Broken lines cannot be used to show hidden planes or hidden lines – lines which cannot be seen behind opaque materials.  Broken lines can’t be used in design patent drawings to show alternate positions of a structure, such as a door moving between open and closed positions.

Broken lines may be drawn along a boundary that does not actually exist in reality.  For example, while broken lines are often drawn along real lines, such as the edge or corner of a table, broken lines could be shown extending across the face of the table’s smooth top.  This would show that the top – or a portion of the top – is not claimed.  Creative and flexible use of broken lines can drastically alter the scope of the design patent protection – intentionally or unintentionally.  They also present a powerful to build a packet fence around a design.  Apple granted multiple patents on the iPhone design, each with a different permutation of broken and solid lines:

Broken line permutations in design patent drawings

 

When broken lines are used, they must be explained.  A statement must be included in the specification explaining the significance of the broken lines.  Sometimes, if the broken lines are used for different reasons, slightly different broken lines are used and each is explained.

There are a lot of ways to prepare a good design patent application, and a lot of ways to mess it up.  When considering design patent protection, I strongly recommend you hire a registered patent attorney to do so, and that ensure that that attorney uses a professional patent draftsman experienced in creating design patent drawings for the United States.  You will rely both on the expertise of the attorney in deciding what views to show, how many views to show, and what material should be claimed and unclaimed, and also on the ability of the draftsman to deliver on instructions from the attorney.



CORONAVIRUS: Patent Office Form For COVID-19 Statement

Getting hotter in Phoenix

As discussed earlier, the Patent and Trademark Office is extending certain deadlines where a delay in filing a paper or paying a fee was due to the COVID-19 outbreak.  Initially, the guidance from the USPTO was to include a specific statement in a filing and make it conspicuous.

The Office has now created a fillable PDF form which contains this statement.  The form can be filled and filed directly to the PTO with its own Doc Code.  Upon filing, it should be easily identified by the Patent Office and processed accordingly.

The form is available here.  Please note: this is a patent form; it looks like the other forms used by the Patent Office.  I’m not aware of any crossover between patent and trademark forms.  It could probably be shoehorned into use as a trademark form, but only with modification, as the fields in the upper half of the form are specific to patent applications and issued patents.  However, you may still be better using the “miscellaneous statement” section of TEAS filings to make your COVID-10 statement in a trademark application or trademark registration.



Design Patent Rocket Docket

Near Eaton Canyon, Pasadena

The “Rocket Docket” program is the system the US Patent Office established to speed up the examination of design patent applications.  Recognizing that design patents cover the external appearance of an item, and that this external appearance, contrasted with the underlying guts, can often be easily copied, the Patent Office created a way to hurry along examination of design patent applications.  Formally known as Expedited Examination but referred to by practitioners and the USPTO alike as the Rocket Docket (even PTO forms use the doc code: “ROCKET”), this program can shave as much as a year off the pendency of a design patent application.

As of March 2020, the average time to a first office action – a first substantive review of a design patent application – was 15.2 months with a total average time from filing to issuance at 21.4 months.  Both of these numbers have been slowing creeping up over the years.  In contrast, it takes just over one month from the day an expedited exam request is granted to the first examination of a rocket docket design patent application.  This is an incredible savings in time.  So, what does it cost?

To be eligible for the rocket docket, a design applicant must conduct a pre-examination search and file a Request for Expedited Examination.  The request includes information about the pre-exam search, and the results of the search must be disclosed in an accompanying information disclosure statement.  Lastly, a fee must be paid.  Currently, the fee for small entities is $450.  This is relatively cheap compared to the cost of expediting a utility patent application for $2,000, but the pre-exam search can be costly, often running more than $2,000.  A thorough search must be run, because the Patent Office leans on that search heavily as a way to reduce the amount of time it needs to review the design application.

The US Patent Office states that the results of a search by a foreign patent office can be submitted in lieu of an internal pre-exam search.  However, it is questionable whether this is a practical approach, as most foreign offices merely register a design without search and examination.

Additionally, the design application must be complete when filed.  This means that the drawings must be acceptable and conform to the Office’s standards.  Drawings which contain errors or ambiguities are frequently an issue in design applications, so great care must be taken with these.  The basis filing, search, and exam fees for a design patent application must also be paid.  In short, the entire application must be complete and in condition for examination – this requires a lot of attention by the party preparing the application.

Failure to submit a request that properly reports on a competent pre-exam search can be basis to have the rocket docket request rejected.  As such, great care must be taken when conducting this search.  It is strongly recommended that a professional searcher perform this search.  Indeed, this firm uses an outside professional search to conduct the pre-exam search and even develop a report on the databases searched, the classes and keywords used in the search, and the results found.



Coronavirus: US Patent and Trademark Office Extends Deadlines Further

Drive Back from Solitude Ski Resort

The CARES Act gave the US Patent and Trademark Office the authority to toll, waive, adjust, or modify deadlines related to patent and trademark owners in light of the coronavirus pandemic.  At the end of March, the USPTO announced it would do just that.  As I summarized here, certain deadlines falling between March 27 and April 30 would receive 30-day extensions when accompanied by a statement regarding the effect of the pandemic on the deadline.

The Office has now modified that deadline extension.  Yesterday, the USPTO announced that deadlines falling between March 27 and May 31 will now be extended up to and including June 1, provided that the filing or fee payment is accompanied by a specific statement that the delay was due to the COVID-19 outbreak.

Please note – this is not an additional extension.  It does not grant another 10, 15, or 30 days to file.  Rather, it simply says that eligible deadlines can now be extended (under the right circumstances) up to a specific day – June 1.  If your deadline was originally due March 27, this gives you two additional months.  But, if your deadline fell on May 31, this only gives you a single extra day.  It s unclear at this time why the Office chose to create an extension running to a specific day rather than an extension of all deadlines by X number of days, as it previously had.

It is possible that this extension allowance will be modified again.



Vagaries of Design Patent Practice

Sunset in Phoenix

Design patents protect the ornamental and aesthetic aspects of a functional item.  Whereas a utility patent protects the parts of the item, the way its parts cooperatively move or operate together, how they are structured and arranged, etc., design patent protection how that item actually looks.  They do this by presenting drawings of the item and then claiming protection in the design shown in those drawings.  As such, the bulk of a design patent application is the drawings, and there is relatively little written text accompanying those drawings.

Because of this, design patents can often seem to be simple.  But there is a subtlety in each application that requires anticipating the prior art, the course of examination, and the need for expansion of design protection in the future.  Complicating this subtlety is the relative scarcity of practical information regarding design patents.  This is a systemic problem, created by a few factors.

First, there just aren’t many design patents out there.  Pretty consistently, less than 10% of the patents issued each year are design patents.  In recent years, that is about 30,000 issued design patents.  About 40 to 45,000 are filed each year, so very roughly, we can say that a third of filed design applications go abandoned (design apps generally have a pendency of about 6-18 months, meaning they are likely to issue in the same or next calendar year, if they issue at all).

Not only are practitioners not filing a lot of design patents, but the ones that are filed don’t provide much feedback.  Design patent applications are never published, so the 15,000 or so applications that abandon each year do so in secrecy.  This is a tremendous loss of learning opportunity from these abandoned applications.  For comparison, around 600,000 utility patent applications are filed each year and about 300,000 issue; though utility patents have a much longer pendency than design patents, we might safely say that at least one hundred thousand utility patent applications are abandoned each year.  A majority of these are published, and the file histories can be reviewed to see what went wrong.  From that, patent attorneys can determine how not to write and prosecute patent applications.  But because abandoned design patent applications are not publicly available, we can’t study what goes wrong in them.  Instead, we have to rely on what went right.  Moreover, it is not uncommon for a well-written design patent application to receive a first action allowance – in other words, no rejections.  While this is a good thing, it does not help expand a practitioner’s understandings to the edges of design patent practice – could more have been claimed, could the claims have been broader, would there have been a reason to claim differently or present different drawings or more drawings or several embodiments, etc.?  Answers to questions like these are just not available except to perhaps – perhaps – the largest entities with tremendous legacy knowledge and systems developed to pass that knowledge to its team (and almost certainly a large team) of lawyers who may be spread and isolated across different and often competing large law firms.

The Manual of Patent Examining Procedure – the Patent Office’s guidebook for reviewing patent applications – is mostly written to utility patents.  Often decried as a manual for Examiners to craft rejections against patent applications rather than a guidebook for level prosecution (defining the limits of rejections and response arguments), the MPEP pays scant little attention to design patent applications.  This means that examination consistency suffers among Examiners and that practitioner’s counsel to clients becomes more nebulous.  Design applications are then written from a few perspectives: not just based on objective rules in the MPEP and case law (few design cases are ever appealed), but the particular client’s tolerance to risk and cost involved in preparing and arguing an application with an Examiner who may or may not read the rules in the same manner as the last Examiner, or even as they did six months ago.  Principled and rule-based arguments that may win in the well-defined arena of utility patent prosecution may descend into pleading negotiation with an Examiner in light of a refusal in a design patent application.

 

 



CORONAVIRUS: Patent Frequently Asked Questions

Lost Dutchman State Park during Coronavirus Outbreak

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The Patent Office is allowing certain filing and fee deadlines to be extended due to the coronavirus pandemic in the US.  Below are common questions about this change:

Question 1: Coronavirus has prevented me from meeting my deadline. What can I do?

The US Patent and Trademark Office has instituted a 30-day extension of time for some patent deadlines. You may be able to benefit.

Question 2: How do I take advantage of the 30-day extension of time?

If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered timely when made within 30 days of the original due date. However, to qualify, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Only certain situations will qualify as delays due to the outbreak. More information is available at the official  Notice of Waiver of Patent-Related Timing Deadlines under CARES.

Question 3: Are there any requirements about how the statement has to be made or presented?

The statement does not have to be verified or submitted in the form of an affidavit or declaration. It must, of course, be truthful, and it is recommended that you keep detailed internal records should there later be a question as to the nature of the delay.

Also, rather than including the statement within a normal filing, it is recommended that the statement be included in a separate paper. While the statement can be included in the paper lodged with the Patent Office, it may be initially missed by the Office and delays could result before it is accepted. If included within a filing, it should be made in a conspicuous manner.

Question 4: What qualifies as “a delay due to the outbreak?”

At this time, it is not clear exactly which situations will qualify as being due to the outbreak.
The applicant, agent, owner, petitioner, inventor, or attorney must be personally affected by the outbreak, so being sick will certainly qualify. However, it is less certain whether they actually have to be sick themselves. The rule identifies that one must be affected by the outbreak, not necessarily the disease. So it is possible that having to stay home to take care of a kid whose school was closed could be a qualifying reason (though it should be noted that the Office has not specifically identified this as qualifying reason). If an office closure, cash flow interruption, travel delays, or inaccessibility of files or other materials causes the delay, this will also qualify. The new rule further states that “similar circumstances” to the above will qualify if they materially interfered with the on-time filing or payment. While it does not appear that the Office requires details regarding how the outbreak delayed the filing, it may be a good idea to provide some basic information about the delay

Question 5: When does an extension start??

Day 1 of the 30-day extension of time is the first day after the original due date, in other words, the first day after the original due date.

Question 6: What if the 30-day extension of time ends on a Saturday, Sunday, or federal holiday?

If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the extended deadline falls on the next regular business day.

Question 8: Are there any fees associated with extension?

No. The extension does not cost anything. The only fees that may be due are those associated with the filing or fee payment which is being extended.

Question 9: What appeal-related filings are eligible for a 30-day extension of time?

The following appeal-related filings are eligible for a 30-day extension of time:

  • notice of appeal
  • appeal brief
  • reply brief
  • appeal forwarding fee
  • request for an oral hearing before the PTAB
  • response to a substitute examiner’s answer
  • amendment in connection with a new ground of rejection by the PTAB
  • request for rehearing of a PTAB appeal decision

Question 10: Are all entities entitled to all CARES Act extensions?

No. Certain forms of relief are limited to small and micro entities.

Question 11: Which filing and fee extensions are only available to small and micro entities?

  • replies to an Office notice issued during pre-examination processing, e.g.:
  • reply to a notice of omitted items
  • reply to a notice to file corrected application papers
  • reply to a notice of incomplete application
  • reply to a notice to comply with nucleotide sequences requirements
  • reply to a notice to file missing parts of application (including, without limitation, the payment of the filing fees)
  • reply to a notification of missing requirements
  • a maintenance fee payment

Question 12: What PTAB filings are eligible for a 30-day extension of time?

  • request for rehearing of a PTAB decision in an AIA trial or interference proceeding
  • petition to the Chief Judge
  • patent owner preliminary response in a trial proceeding, or any related responsive filing

In the event that the USPTO extends a deadline for a patent owner preliminary response or any related filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request for an extension of time can be made by contacting the PTAB.

Question 13: What PTAB filings are not eligible for an extension of time?

At this time, PTAB is not extending any statutory deadlines for filing an AIA petition under either 35 U.S.C. §§ 315(b) or 321(c).

Question 14: Has the Patent and Trademark Office provided any other relief in view of the COVID-19 outbreak?

Yes. The USPTO has waived the fee for petitions to revive applications that became abandoned because applicants could not meet the deadline for responding to an Office communication due to the COVID-19 outbreak. The Office has also waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.

Question 15: Will the USPTO extend the CARES Act relief beyond April 30?

At the time of this writing, the Patent and Trademark Office has not announced further extensions. However, I believe another 30-day extension is highly likely to be granted should the virus continue to keep the economy depressed for a few more weeks.

Question 16: If I have a question about CARES Act extensions, whom do I contact?

The USPTO has a help email dedicated to COVID, but I have found that emails sent to general email addresses at the USPTO never get returned. You can also contact the Office of Patent Legal Administration at 571-272-7704 (or 571-272-7703 for reexamination), or contact Arizona patent attorney Tom Galvani at 602-281-6481.



CORONAVIRUS: Patent Office Not Requiring Original Handwritten Signatures

The Patent and Trademark Office will not be requiring handwritten signatures during COVID-19 outbreak.  Correspondence with the Patent Office requires a signature of some form.  Generally, an electronic or S-signature is sufficient to submit a document to the Patent and Trademark Office.  However, in a few situations, an actual, pen-to-ink, handwritten signature is required.

For the seemingly foreseeable future, however, that requirement has been waived.  The United States Patent and Trademark Office considers the effects of COVID-19 to be an “extraordinary situation” for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.

The waiver applies mostly to attorney and agent issues, such as new licensing applications to practice before the US Patent and Trademark Office and disciplinary matters in front of the Office of Enrollment and Discipline.  Additionally, some credit card payments apparently must be accompanied by handwritten signatures, though in a decade of practice, I’ve never encountered this.

While the requirement for a handwritten signature has been waive, the requirement for a signature has not.  Indeed, where handwritten signatures were once required, corresponding parties must now submit photocopies of original signatures and S-signatures will satisfy during waiver.