House to Vote on Bill That Would Give USPTO Fee-Setting Authority

    By Donald Zuhn --

Earlier today, the Intellectual Property Owners Association (IPO) reported that new legislation that would provide the U.S. Patent and Trademark Office with fee-setting authority will be brought to the floor of the House of Representatives for a vote during its legislative business session on Tuesday.  The bill, entitled the "Patent and Trademark Office Fee Modernization Act of 2010," which has yet to be introduced and which is not yet available on THOMAS or OpenCongress, is nevertheless listed on the House's weekly calendar that can be found on a number of websites, including The Weekly Leader page at the Office of the Majority Leader's site.  According to The Weekly Leader, the bill is being sponsored by House Judiciary Chairman John Conyers Jr. (D-MI).

While the text for the bill has not been made public, the IPO report indicates that the legislation would transfer fee-setting authority from Congress to the USPTO.  The IPO report also indicates that the bill lacks a provision prohibiting fee diversion to other government agencies.  The IPO notes that the bill is scheduled to be taken up after 2:00 pm (Eastern) under the "suspension of the rules" procedure that limits floor debate.  Assuming that the legislation indeed lacks a provision prohibiting fee diversion, the organization has declared its opposition to the bill, stating that it "WILL MAKE IT MORE LIKELY THAT FEES WILL BE DIVERTED TO OTHER GOVERNMENT PROGRAMS -- A TAX ON INNOVATION" (capitalization in the original).

Two other organizations issued press releases regarding tomorrow's House vote.  In its own release, the American Intellectual Property Law Association (AIPLA) stated that it "opposes granting the USPTO fee-setting authority without ending the problem of fee diversion."  According to the AIPLA press release, the Patent and Trademark Office Fee Modernization Act of 2010 will give the USPTO Director the authority to increase fees, while lacking "any mechanism to ensure that those fees remain at the Office."  In its release, the "AIPLA emphatically opposes this legislation."  AIPLA President Alan Kasper adds that "[t]he time has come for Congress to once and for all provide the USPTO with the ability to more predictably and intelligently plan its fiscal operation by ending the possibility of fee diversion."  USPTO Director David Kappos, in his testimony before the House Judiciary Committee on May 5, noted that the Office planned to collect "between $146 and $232 million more than its appropriated amount in FY 2010," an amount that could be diverted away from the Office.

The press release also demonstrates the AIPLA's preference for the Senate approach to patent reform by declaring that the organization "supports a comprehensive approach to patent reform now working its way through the Congress, and not the piecemeal approach represented by this bill."  As part of the "piecemeal approach" being taken by the House, Rep. Darrell Issa (R-CA) introduced a false patent marking bill (H.R. 4954) in March that would amend 35 U.S.C. § 292(b) to permit "[a] person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury" (see "False Patent Marking Bill Introduced in the House").  A nearly identical provision was added to the Senate's "comprehensive" patent reform bill (S. 515) by Manager's Amendment (see "Qui Tam Actions in Senate Sights").

The Coalition for 21st Century Patent Reform also issued a press release today announcing the group's opposition to the Patent and Trademark Office Fee Modernization Act of 2010.  Coalition Chairman Gary Griswold noted that the group of nearly 50 members from 18 diverse industry sectors opposed the bill because "[t]he nation needs legislation that guarantees that any fees paid by inventors will be used to process their applications."  According to the Coalition:

The Patent and Trademark Office Fee Modernization Act of 2010 fails to include the efficiency and quality enhancing provisions contained in the managers' amendment to S. 515, The Patent Reform Act of 2010, that would simplify the rules and procedures for granting patents, allow the public to provide patent examiners with relevant information before deciding whether a patent can be granted, and permit prompt challenges of newly issued patents to ensure they satisfy the rigorous standards for patenting.

The Coalition's release also states that "[o]ur country's inventors and innovators need comprehensive patent reform -- and so does the USPTO and our economy.  The agency needs more than money to solve its problems and properly manage patent applications."  A copy of a statement circulated by the Coalition to House members can be found here.

Comments

[Gena777]

Though it's not surprising, nonetheless it will be a disappointment to many that comprehensive patent law reform has failed yet again. I suppose transferring fee-setting authority to the USPTO is better than nothing, but I agree that it seems pretty pointless to include fee-setting authority without provisions preventing fee diversion. Fortunately, I understand that this first version of the new legislation, which lacked prohibition of fee diversion, has been withdrawn. Hopefully, the new version -- which I understand is currently being drafted and does prevent fee diversion -- will appeal more to common sense.
http://www.generalpatent.com/media/videos/patent-protection