IP ALERT—The America Invents Act: Changes Taking Place Upon or Shortly After Enactment
September 13, 2011
Executive Summary
The America Invents Act has passed both the House and Senate. President Obama has already indicated that he will sign the Act once it reaches his desk, so we expect enactment soon.
In our IP Alert on September 9, we reported a number of changes the Act will cause in the coming months. However, there are a number of changes that will occur upon the President's signature or shortly thereafter, described below.
15% Transition Surcharge Fees
All patent fees charged by the United States Patent and Trademark Office (USPTO) will increase by 15%. The Act also includes a new schedule of fees, but those fees are the same as the existing fees. The 15% surcharge is added to the fees in the new schedule. This 15% surcharge will go into effect 10 days after enactment.
Additional Fee for Patent Applications Not Filed Electronically
To encourage patent applicants to use electronic filing, an additional $400 fee ($200 for a small entity) will be instituted for patent applications not filed electronically. Since Wolf Greenfield currently files most patent applications electronically, the impact of this change should be minimal. This additional fee for non-electronic filing will go into effect 60 days after enactment.
Prioritized Examination
The Act authorizes the USPTO to implement a prioritized examination program for utility and plant patents. Applicants may file a request for prioritized examination with payment of a fee of $4,800 ($2,400 for small entity), which is in addition to other filing fees.
The patent application for which the request is made must have, or be amended to have, no more than 4 independent claims and no more than 30 total claims. The USPTO may not accept more than 10,000 such requests per year, until further regulations are prescribed.
Accordingly, clients considering filing a request for prioritized examination might want to do so soon after enactment. This prioritized examination program will go into effect 10 days after enactment.
Establishment of Micro Entity Status with 75% Reduction of Fees
A new "micro entity" is created by the Act. Applicants qualifying for micro entity status will be entitled to a 75% fee reduction for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.
To qualify as a micro entity, an applicant must certify:
(1) that, in addition to qualifying as a small entity, the applicant has not been named as an inventor on more than 4 previously-filed US utility applications, has a gross income that does not exceed 3 times the median household income for the preceding calendar year as reported by the Census Bureau, and has not assigned a license or ownership interest (and is under no obligation to do so) to a non-micro entity; or
(2) that the applicant obtains the majority of her/his income from an institution of higher education, or that the she/he has assigned a license or ownership interest (or has an obligation to do so) to an institute of higher education.
Significantly, in situations involving certification (2) above, the applicant need not also satisfy the conditions required for small entity status restricting licensing or assignment to non-small entities. Accordingly, most university-owned patent applications and patents should qualify for micro entity status regardless of their licensing status.
This new micro entity status will go into effect immediately upon enactment.
Significant Changes in Patent Marking Requirements
A patented product (or associated packaging) may be marked with the word "patent" or "pat." followed by an address of a posting on the Internet, accessible to the public without charge, that lists the patent number(s) that cover the patented product. Previously, the patented product needed to be marked with the actual number(s) of the patent(s) covering the patented product to give public notice.
In addition, the marking of a product with the patent number of a patent that covered the product but that has expired will no longer be actionable as a false marking.
Finally, a private party will need to show that it suffered competitive injury from the false marking to have standing to sue. These patent marking changes will go into effect immediately upon enactment.
Further Information
As always, if you have specific questions about how this legislation might affect your patent portfolio or patent strategy, please contact your Wolf Greenfield attorney.
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