Intellectual Property Section at Hall Estill  

 

Are you Prepared for Upcoming Changes in U.S. Patent Law?

  

U.S. patent law is about to undergo two significant transformations in March of this year.  The first is a conversion from a "first to invent" (FTI) system to a "first-inventor-to-file" (FITF) system on March 16.  The second is a large increase in patent processing fees on March 19.  Both may have a significant impact on the state of innovation in the United States.


These changes are part of a larger transformation of the patent system enacted by the America Invents Act (AIA) which was signed into law by President Obama on September 16, 2011.  The AIA represents the largest change to the U.S. patent system since 1952, and provides a number of reforms in both the patent application process and in the area of patent litigation.  These reforms are being sequentially phased in and will be fully in place by 2015. 


The conversion to a FITF system on March 16 will conform the U.S. patent system with the rest of the world.  Advocates have taken the position that the conversion by the U.S. from FTI to FITF will reduce the incidence of frivolous patent infringement lawsuits.   Opponents have argued that FITF is protectionist in nature and that moving away from FTI will slow down the rate of innovation in the U.S.  We will soon see which side is right.


As to the fee increases, one of the major changes of the AIA is to make the United States Patent and Trademark Office (USPTO) self-sustaining.  In the past, significant portions of the fees paid to the USPTO were diverted to the general fund by Congress.  The AIA eliminates this, which is a positive development.  However, the USPTO has also undertaken significant expansion efforts, including the hiring of thousands of new examiners and the opening of regional offices around the country in Detroit, Dallas, Denver and San Francisco.   This has resulted in the USPTO having its own fee setting authority,  which it is now about to exercise in earnest.


The largest fee increases to hit will be in USPTO utility patent application filing fees and maintenance fees.  Filing fees are paid at the time of the filing of an application, and will increase on March 19 by about 50%.  Maintenance fees are periodically paid over the life of the term of an issued patent and are set to increase beginning on March 19 by about 50-100%.  Other USPTO fees such as extension fees and patent issuance fees will also undergo significant increases.


It would be prudent for clients who have or desire patent protection to take steps to secure their rights prior to the implementation of these changes.   For those with new innovations, it may be advisable to consider filing one or more patent applications prior to the March  16 cut-in of FITF, so that the patent application will be able to take advantage of the current FTI scheme.  Similarly, for those with pending applications, where practical it may be advisable to pay applicable fees (e.g., issue, maintenance, etc.) prior to the March 19 cut-in of the new USPTO schedule.


We hope this information is helpful. If you have any questions about these or other matters, please feel free to contact the Intellectual Property Law Section at Hall Estill or your Hall Estill Attorney 

 

Hello Amazing Idea 

www.HallEstill.com 

 

Tulsa -  918-594-0400   Oklahoma City - 405-523-2828  

Fayetteville - 479-973-5200 | Washington, D.C. - 202-973-1200