U.S. PATENT & TRADEMARK OFFICE CHANGES EFFECTIVE MARCH 2013

01.02.2013

First to File

This is a reminder (see Ehrlich & Fenster Newsletter No. 20, September 2011) that the third installment of the America Invents Act (“ACA”) is effective March 16, 2013. Any U.S. patent application filed after March 15, 2013 will be subject to the new provisions of the law that now provides that the “first to file” a patent application for an invention will be entitled to the patent, rather than the “first to invent”.

Other than publications of the inventor within a one year grace period prior to the filing of the patent application, prior art or acts having a date earlier than the effective filing date of the patent application will be available as prior art.

New Fee Schedule

Effective March 19, 2013, the USPTO is instituting a new fee schedule with (surprise) mainly increased fees, mostly minor. An example of an increased fee is the first month extension to response fee increases from $75 to $100 for Small Entities. Maintenance Fees are also increasing appreciably, anywhere from $225 for the Maintenance Fee due at the 3.5 year mark, to $1,295 due at the 11.5 year mark. For all those whose window to pay the Maintenance Fee has opened up before March 19, 2013, and who have already decided to pay the Maintenance Fee, should consider paying the fee before then rather than waiting to pay the higher fee at a later date.

Prioritized Examination (Including RCE’s)

As discussed in an earlier Ehrlich & Fenster Newsletter (No. 22, February 2012), prioritized examination to obtain a prompt (within a year) decision of patentability is available for the first 10,000 applicants per fiscal year, to those willing to pay an additional $2,400 (small entity) if a request is made at the time of filing the patent application. This option is also available for Requests for Continued Examinations (RCE) (no need to file the prioritization request at the time of filing the RCE). We have noted that many examiners are not taking up RCE’s promptly and are following USPTO guidelines that went into effect in September 2010 that no longer prioritizes RCE’s. We have recently encountered a situation that an RCE filed in October 2010 will not be acted on for at least another two years! For those finding themselves in a similar situation and wishing to receive an action on their RCE promptly, should consider this option. Note that the USPTO is (shockingly) reducing their fee for Small Entity prioritized examination to $2,000 effective March 19, 2013.

Micro Entity Status

Effective March 19, 2013, the USPTO is instituting a new category of paying entity. All Small Entities who further certify that they meet the following below requirements, will be entitled to pay one-half of the Small Entity Fees:

1. Neither the applicant nor any inventor have been named on more than four previously filed U.S. non-provisional patent applications, and that the applicant has an annual gross income not exceeding a certain level (currently approximately $150,200); or

2. The applicant’s employer is a U.S. (unlike “any country” availability for Small Entity status) institute of higher learning, or has assigned or licensed the invention to the institute.

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