Patent Changes Include Fast Tracking, Some Fees

U.S. patent official Janet Gongola’s visit to Little Rock last week was an educational one for those who stopped by for a free, two-day patent workshop at the Arkansas State Library.

Gongola is the patent reform coordinator for the USPTO and she was in town to provide an overview of the America Invents Act. The legislation was signed into law last year and represents a significant overhaul of the U.S. patent system (the first major changes since 1952, actually).

Gongola is charged with spreading the word about patent reform (funny, how ‘patent reform’ conjures images of sun-soaked meadows and burbling brooks as opposed to say, health-care reform). She scampers about the country doing so, and last week did so at the ASL, the state’s only officially designated U.S. patent and trademark resource center.

Gongola was kind enough to sit down with INOV8 and explain how the new law transforms the U.S. from a first-to-invent to a first-to-file system, its most prominent change.

Her overview touched on other “patent reform” highlights, including the introduction of fees for patent “extras” such as fast tracking that will help offset the cost of  hiring new patent examiners, which will in turn help eliminate the current patent backlog that stands at roughly 630,000 (that’s unexamined patent applications).

Fees will recover the aggregate estimated cost of operations for the USPTO only, and will be in effect for seven years.

Gongola noted that the U.S. Constitution is the only such document of its kind to include a clause devoted to intellectual property (U…S…A). With that in mind, here are some high points from Gongola’s presentation:

• The new law (AIA) focuses on three objectives: Give certainty of patent rights, remove or prevent low quality patents and build a 21st century patent system (Gongola said this last one boils down to hiring new examiners and updating the USPTO’s IT).
• Currently, it can take up to six years in some cases from the time a patent is filed until the time an inventor has it in hand. On average, the entire process takes about half that time.
• The new law is expected to reduce that last figure by half.
• Fast track patent examination is available…for a fee. Minimal requirements for fast tracking include a $4,800 fee (which can be reduced by half for ‘small entities’), a short history of patent claims (you can’t be filing a patent app every other week), and you must e-file.
• Gongola said that since the law was signed in September of last year, more than 4,600 fast track petitions have been filed with 96 percent of them granted. The average time to final disposition is just 4.7 months. We’d call that fast tracking, all right.
• You’ll have to pay for a supplemental exam (reconsideration of a patent or aspects of one) effective Sept. 16, up to $21k total with most of it reimbursed if the office rules in your favor.
• Want to challenge a patent? You’ll get one shot to do so under the new law’s one-bullet theory.
• E-filing is encouraged, so much so that it’ll cost $400 (less for those ‘small entities’) to paper file. However, fees won’t apply to design, plant or provisional patent apps.
• The inventor’s oath/declaration must ID each inventor and will come into play at the end of the patent process.

These are just some of the changes. All of them are outlined in detail at USPTO.gov/AmericaInventsAct.

(And of course, be sure to check out IA’s Arkansas patent database.)

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