President Signs AIA into Law; USPTO Begins Implementation of Act

By Donald Zuhn --

On Friday, President Obama signed the Leahy-Smith America Invents Act (H.R. 1249) into law.  In a press release issued after the signing, the White House said the legislation would "help American entrepreneurs and businesses bring their inventions to market sooner, creating new businesses and new jobs."  President Obama noted that he was pleased to sign the Act, adding that "[t]his much-needed reform will speed up the patent process so that innovators and entrepreneurs can turn a new invention into a business as quickly as possible."

The U.S. Patent and Trademark Office responded to the signing by updating the website the Office recently established to provide information and seek input on the implementation of the Leahy-Smith America Invents Act (AIA).  New information being provided on the website includes a seven-page table of effective dates provided under the AIA.  Among the effective dates listed in the table are:

• September 16, 2011 -- micro-entities established under § 10 of AIA
• September 26, 2011 -- prioritized examination fee of $4,800 established under § 11 of AIA
• September 26, 2011 -- 15% surcharge on all fees charged or authorized under Title 35 imposed under § 11 of AIA
• November 15, 2011 -- additional fee of $400 for non-electronic filing of applications (other than design, plant, or provisional applications) established under § 10 of AIA
• September 16, 2012 -- inventor's oath or declaration provisions under § 4 of AIA take effect
• September 16, 2012 -- third-party submission provisions under § 8 of AIA take effect
• September 16, 2012 -- supplemental examination provisions under § 12 of AIA take effect
• September 16, 2012 -- post-grant review provisions under § 6 of AIA take effect
• March 16, 2013 -- first-inventor-to-file provisions under § 3 of AIA take effect
• March 16, 2013 -- derivation proceedings provisions under § 3 of AIA take effect

The Office's AIA website also provides the following timeline of major milestones under the legislation:

With respect to the 15% surcharge on all fees charged or authorized under Title 35, the Office has posted the new fee schedule that will take effect on September 26, 2011.  The current fee schedule can be found here.

Finally, the Office's AIA website provides a list of upcoming AIA-related events, which includes an American Conference Institute (ACI) webinar on the AIA by Commissioner Robert Stoll on September 27, 2011 at 1:00 pm (ET).  Registration for the webinar is complimentary; those interested in registering can do so here.

Comments

[EG]

Don,

One thing (amongst others) I find puzzling is, with regard to both the small entity and microentity discount, how does the 15% fee surcharge work: (1) is this surcharge based on the reduced fee, i.e., after taking the small entity/microentity discount?; or (2) is this surcharge based on the unreduced fee, i.e., before taking the small entity/microentity discount? My reading of Section 11(i)(1)(A) is that it is the latter, before the base fee is reduced by the small entity/microentity discount (but the wording of the AIA isn't exactly clear on this point). Does anyone else have a differing view, and if so, why?

[EG]

Don,

Another "fly in the ointment" that is deceptive in the AIA, namely what is the "true" effective date of the microentity discount. The microentity discount won’t actually take effect until Kappos exercises his fee setting authority pursuant to Section 10 of the AIA. See below (from USPTO FAQ on the AIA):

Question FEE4: If I meet the micro entity of the AIA, will I be able to pay a micro entity fee beginning on the date of enactment – September 16, 2011?

No. The AIA does not permit the USPTO to apply the 75% micro entity fee discount until the micro entity fee for a specific item is set or adjusted using the fee setting authority provided in section 10 of the Act.

So while the microentity provision effective date is September 16, 2011, the fee reduction benefit of being a microentity won’t happen until Kappos exercises his fee setting authority under Section 10. Wonderful (and if you detect sarcasm, you’re correct).

[James Demers]

Well, this makes things interesting. I have a microentity client with an upcoming national stage filing deadline, and we're in the position of beating the Sept. 26 fee increase, or waiting in the hope that the microentity discounts will kick in prior to the deadline (in December).

I'm guessing Kappos will take his sweet time about doing anything that cuts PTO revenue. If anyone thinks they know different, I'd like to hear it.

[Suzanne A. Sprunger]

There seem to be some practical reasons why the USPTO needs to go through the rule-making process before implementing the fee reduction for micro entities, which is not going to be as simple as a 15% fee increase.

The definition of micro entity in section 123(a) of the AIA refers initially to 'applicant', but then in its subsections it becomes a bit unclear whether 'applicant' always means inventor(s) (as in 123(a)(2)), or could mean a small business or other organization (as in the reference to 'small entity' in 123(a)(1)). So whose income is being referred to in 123(a)(3) - the inventor(s)'? Or does the income of each of the 'small entity' parties involved have to meet the criterion of 123(a)(3)? What about when the inventor is deceased or otherwise unavailable and a representative of the inventor is the 'applicant'?

These could be some reasons for a delay in the implementation of micro entity status unrelated to the USPTO's great need for increased fee revenue.

[6's mother]

Obama said it will "help American entrepreneurs and businesses bring their inventions to market sooner, creating new businesses and new jobs."

Earth to Obama, Earth to Obama, come in Obama...

New tasks forced upon the PTO, coupled with the soon-to-be across-the-board budget cuts, means less money for examination and BPAI. Sounds like increased backlog to me.

[patent litigation]

President Obama certainly made a difference in the passage of this bill, in the process also significantly raising the profile of the patent world and its issues. It's too bad that Congress didn't do its part by enacting the bill that almost everyone else wanted -- one that would have ended the diversion of USPTO fees to the legislature. But then, I guess that's what happens when you let foxes guard the henhouse.
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