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First-Inventor-to-File, Micro-Entity, and Patent Fees Public Forum

Acting Under Secretary of Commerce for IP and Acting USPTO Director Teresa Stanek Rea

March 13, 2013

First-Inventor-to-File, Micro-Entity, and Patent Fees Public Forum

Remarks as Prepared for Delivery

Good afternoon, everyone! It is great to see so many of you at our Alexandria headquarters, and welcome to those of you watching our webcast. As we have done throughout our AIA implementation process, we have kept our stakeholders and the public informed and involved. Today’s event is just the latest example. I would like to give a big thanks to our America Invents Act czarina, Janet Gongola, for her work assembling this event, and also for her tireless work the last 18 months serving as our direct liaison with you, our customers. Thank you, Janet!

The America Invents Act has kept us all pretty busy. The USPTO has implemented 21 provisions of the AIA over the past 18 months, most of them last September. We are thrilled with the results we have seen over the last six months. Our new rule permitting third-party prior art submissions is providing our examiners valuable contributions to pending applications. And we are seeing significant interest in our two new post-grant proceedings, the inter partes review and the covered business method patent review. And of course, tomorrow the U.S. Patent and Trademark Office will implement one of the final provisions of the historic America Invents Act, when first-inventor-to-file becomes effective, followed by the micro-entity discount and new patent fees on Tuesday, March 19th.

Let me start by addressing first-inventor-to-file. The effective date of this provision is set in statute, as it will be exactly 18 months after the signing of the AIA by President Barack Obama on September 16, 2011. Tomorrow’s transition to first-inventor-to-file moves us toward the further harmonization of our patent law with that of other major industrialized countries. We continue, of course, to push for a harmonized grace period around the world to match what we have in place.

The new system will improve objectivity and transparency while supporting U.S. innovators large and small as they acquire venture capital, begin manufacturing their innovations, and seek out markets both domestic and foreign. The first-inventor-to-file provision not only simplifies the determination of prior art in different ways but also makes prior art more objective.

First, the provision eliminates the geographic restriction on sales and uses. After March 16, a sale or use anywhere in the world may qualify as prior art. Second, the FITF provision eliminates the use of secret sales as prior art, making prior art objectively identifiable. Third, the FITF provision treats a U.S. patent or published patent application as prior art as early as the filing date of the foreign priority application. This overturns the Hilmer doctrine and introduces art previously unavailable under the first-to-invent system.

In addition to these changes, the FITF system retains—and even expands—the grace period. This means an inventor's public disclosure of his work in the one-year period before the inventor files for a patent application will not be available as prior art. Likewise, a third party’s disclosure of the claimed invention during the grace period will not be available as prior art if the third party obtained the claimed invention directly or indirectly from the inventor.

These are just some of the highlights of the FITF provision. Today, we will share many more details about our final rules and guidance, to ensure you are ready to navigate our new patent law. Those rules and guidance were both published a month ago in the Federal Register, and you can find links to these documents on our public AIA micro-site located on our USPTO website.

Additionally, I want to explain how we are training our examiners on the first-inventor-to-file provision, so you know what to expect from them. This month, we are walking our examiners through the statutory framework for prior art, helping them learn to recognize whether an application should be examined under AIA or pre-AIA law. This summer, we will delve deeper, providing comprehensive training on all aspects of the provision. Between now and the summer, we will be offering "just-in-time" training for applications that require examination, for example, an application undergoing  prioritized examination.

We selected this iterative training approach because most examiners will not apply the first-inventor-to-file prior art system to an application for several months down the road, and because we want to have the opportunity to reinforce key concepts over the next few months. All our training materials, including some great videos with helpful examples, will be available on the AIA microsite I mentioned earlier.

Now, let’s talk a little about the new patent fee schedule and micro-entity discount that both go into effect Tuesday, March 19th. What is most significant about the new patent fee schedule is that thanks to the America Invents Act, it will be the first time in U.S. history that the patent office is setting its own fees, rather than implementing ones crafted by Congress. Specifically, we have set or adjusted over 350 patent service fees, taking into account much of the input we received from all of you and our Patent Public Advisory Committee during our fee setting process.

This new patent fee schedule will position the agency to accomplish several goals that you helped us to set in our strategic plan and fee setting process. To mention a couple: We are aiming to collect sufficient revenue to tackle the backlog of unexamined patent application as well as to reduce application pendency for not only a first office action but also a final disposition. We likewise aim to foster innovation and job creation by lowering the barrier of entry into the patent system with below cost front end fees for filing, searching, and examining a patent application. At the same time, we will recoup the front end subsidy with above cost back end fees for maintaining a patent.

Flexibility in fee-setting allows us to find creative ways to benefit individual inventors and small entrepreneurial enterprises. In conjunction with the release of our new patent fee schedule, the agency will begin offering a micro-entity discount of 75 percent on all fees associated with filing, searching, examining, issuing, maintaining, and appealing a patent application or patent. Additionally, we are expanding the fees eligible for the small entity 50 percent discount. These discounts are designed to assist truly independent inventors in gaining access to the patent system.

Before I turn the program back over to Janet, let me just say that I am proud of the collaboration we shared with our stakeholder community over the past 18 months in this process and greatly appreciate the input that all of you have given, both those in the room and those joining us on the webcast. I truly believe that our rules are stronger and better suited for a 21st century patent system because of the public feedback we received and we incorporated into every single rulemaking we promulgated.

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Last Modified: 4/5/2013 10:47:05 AM