USPTO’s New Patent Fee Proposal
The USPTO has released a series of documents about the proposed new rules for patent fees. These new rules are part of the Patent Reform act of 2011, and were one of the main reasons the act received such wide bipartisan support, the patent office has a strategic issue with pendency, there are more patent application coming in than there are resources to handle the volume. Here's a list of the issues addressed in the announcement and the image of the proposed fee structure.
PowerPoint deck of the fee changes.
While this announcement may mean higher fees for larger R&D departments, Patent fees are overall a smaller portion of the cost of patenting when considering the costs of attorney fees. The bigger issues for R&D departments arise in making decisions about what to patent and what not to patent in light of the Patent Reform Bill’s changes from first to invent, to first inventor to file, and the effects those changes have on choices about what to patent when and if an invention is within a company’s overall technology strategy.
Insights For R&D On The US Patent Reform Bill By Robert Stoll
Newlogic is a management consultancy to R&D executives. So we think a lot about how the processes of R&D organizations operate. We’ve been wondering how R&D processes are going to change because of the US Patent Reform bill of 2011. So I’ve been conducting a number of interviews with industry colleagues, and writing a series of articles about Patent Reform, R&D and product development.
I decided to interview Bob Stoll, who is a new partner in the Drinker Biddle & Reath’s (link: http://www.drinkerbiddle.com/) Intellectual Property Practice Group., Mr. Stoll, is the former U.S. Patent Commissioner. Chatting during our interview he suggested that while the act wasn’t perfect, which Act is? He said, “The act is taking the system into the 21st century, and will stimulate economic growth and invention.” Here’s the rest of the interview.
John: R&D organizations are concerned with technology strategy, that process of determining which projects to develop based on the company’s business strategy. Given that what organizational changes do you think R&D organizations should make to prepare for the US Patent Reform bill?
Patent Reform At The University Of Hawaii Tech Transfer Office
Patent Reform will be rolling forward for the next few years culminating in the implementation of the final provisions on September 16th 2013. The USPTO announced some new rules about prior user right, so not only do we have to learn and consider what are the effects of patent reform will be on the R&D organization, but results will only become apparent over time.
Lee Marvin Taylor is a Specialist, in the Entrepreneurship Program (COE) for Technology Liaison at the University of Hawaii. Following my interview with Melba Kurman, I was introduced to Lee as running a top University Tech Transfer office in the US. He graciously answered my questions, and also asked Eric Cohen, Intellectual Property Attorney, at Brinks Hofer Gilson & Lione to clarify a point.
John: What steps has your college taken to prepare for the America Invents Act?
Lee: The deadline is March 16th of 2013, and we are really kind of business as usual, however we will have to file earlier and more often. The grace period will go away. And so that means that while a good many of disclosures are given to us after publication, many Universities have relied on 102 b for the grace period. This has been the existing M.O. at Universities; professors do the publications, and then go to the tech transfer office. Obviously if it’s a pharmaceutical matter, the professor and the office work harder. Now given the changes to the law the Technology Transfer Office will have to work harder, to get a professor to file before disclosure, because of the loss of US and foreign rights. Our education about the changes will happen in the fall of this year.
Patent Reform’s Effect On The University Tech Transfer Office & R&D Organizations
Melba Kurman is my next interview subject for my blog series on Patent Reform and R&D. I found Melba through the series of excellent articles she has written on the topic of Patent Reform and Universities. Melba Kurman is a strong advocate of both the value of university innovation, as well as the value of updating and evolving how university inventions are brought to market. Her insights and analysis arise from first-hand experience working inside a university technology transfer office and before that, in a large technology company. She is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.
John: What organizational changes do you have to make to prepare for patent reform?
Melba: The unit that manages patents -- the technology transfer office in the case of a university -- will have to think through whether it can afford the time and cost of getting a provisional patent on most newly submitted inventions. If a university is going to make the commitment to patenting more of its inventions, then many universities will need to make changes to their tech transfer workflow and budget allocations. In terms of outreach, technology transfer staff should reach out to university researchers to make sure that researchers understand that there’s a weakened grace period, and that they should submit new inventions as soon as they can.
Brad Barbera On What Patent Reform Means For Product Development
Patent Reform approaches, actually, it is already here given that some of the provisions are already in place, and product development managers need to be thinking about its consequences. That’s why I chose to reach out to Brad Barbera, who is the Executive Director of the Product Development and Management Association, he has been in his current role at the PDMA for about 9 months, but has a 15 year background with the association and over twenty years in the field of product development. Brad and I recently chatted about the issue of Patent Reform and product development.
First, however, Brad had a disclaimer: “I am not a lawyer, we do not have a staff PDMA IP lawyer, and I have not sought specific advice in this area. Everything is based on what I’ve read, and my own personal speculation.”
John: What steps has your association taken to prepare product development members for the America Invents Act?
Brad: We are trying to understand the act; I’m contacting IP lawyers, planning on webinars and in-person presentations at both the international and local levels. But I see that there’s an 18 month window here, where there’s a lot to still be settled, as not all the rules are written. So here at the PDMA we are interested in understanding the implications and helping our members operate effectively in the new system. My biggest single concern is that the rules are going to get in the way of innovation, more than they are going to help.
Insights On The Patent Reform Act Of 2011 At Michigan Technological
The Patent Reform Act of 2011 has important ramifications for R&D organizations. As the start to a series of articles on the topic I spoke with Jim Baker, Ph.D., Executive Director, Innovation and Industry Engagement, at Michigan Technological University about his University’s preparation ahead for Patent Reform.
John: What steps has your college taken to prepare for the America Invents Act?
Jim: We have not done anything very much dramatic, no structural changes. One thing, we have tried to do, is better educate people on the consequences on public disclosure.