Patent and Trademark Office Estimates It Can Run 4 Weeks During Shutdown

From the U.S. Patent and Trademark's website:

During the general government shutdown that began October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. We continue to assess our fee collections compared to our operating requirements to determine how long we will be able to operate in this capacity during a general government shutdown. We will provide an update as more definitive information becomes available.

You can read the full post here.

Want to help improve the MPEP or TMEP? The PTO wants to hear from you.

David Kappos (the Director of the Patent and Trademark Office) writes in his blog about the ongoing effort to reengineer the MPEP. They want the IP Community to get involved:

I’m thrilled to announce to our readers that we have now put out what we believe is a radically new way for us to work in collaboration with colleagues and stakeholders in getting this important job done. The vehicle we chose to bring that philosophy to action is the Internet, more specifically an online discussion tool. Now for the first time in history, the IP world can work with the PTO, together and collaboratively make the MPEP and TMEP into state-of-the-art practice documents.

So, go join the discussion on the MPEP or the TMEP and let your voice be heard.

USPTO was arbitrary and capricious over $10

The PTO granted Jorge Taylor U.S. Patent No. 5,178,701 relating a chemical sealant device for fixing flat tires. Mr. Taylor's 7 1/2 year maintenance fee was due between January 12, 2000 and January 12, 2001. If he paid between January 12, 2000 and July 12, 2000, the fee was $975. If he paid between July 13, 2000 and January 13, 2001, the fee was $975 plus a $65 surcharge, for a total of $1,040.

Mr. Taylor claims the PTO told him by telephone that the fee to pay was $1,030. So that's what he paid on January 13, 2001. The PTO kept the cash.

In 2004, Mr. Taylor called the PTO in advance of paying the 11 1/2 year maintenance fee (perhaps to find out how much?). The PTO then informed him that his patent was expired because he hadn't paid the 7 1/2 year maintenance fee.

Mr. Taylor then sent a number of letters asking for resinstatement (the PTO treated these each as petitions, but denied them without reviewing the merits as Mr. Taylor did not submit the $200 petition fee). Mr. Taylor explained that he could not afford the $200 petition fee, but that he "would not wave [sic] my money nor my patent without a fight." He explained:

1) You never billed me, but told me over the phone that my fee was $1030.00. I paid you that much.

2) You cashed my check, pocketed my $1030.00 and expired my patent for lack of payment. You then never informed me otherwise. I also have proof that I paid this amount of $1030.00. You kept me in the dark over a $10.00 discrepancy for over 3 years so that you could keep the $1030.00 and expire my patent, without my knowledge, for lack of payment. If I did not pay the fee why would you cash my check? How convenient, like a thieve [sic] in the night, never informed me of your malfeasant [sic]. If there were any discrepancies as to the fee owed and the fee paid, you should have made me aware so that the transaction could have been corrected.

2 year laters, Mr. Taylor sued the PTO for misappropriation of his $1,030, and sought damages of $1 billion (his estimated value of his patent). The district court dismissed under Fed. R. Civ. P. 12(b)(6). Mr. Taylor appealed to the Federal Circuit in forma pauperis.

Keeping Mr. Taylor's money while expiring his patent was not cool:

This court finds that the Office’s course of action in accepting Mr. Taylor’s deficient payment on the one hand, while on the other hand expiring his patent without notifying him under MPEP § 2531 that his payment was inadequate, was arbitrary and capricious.

The Court then remanded the case to the district court with instructions to exercise its equitable powers and reinstate Mr. Taylor's patent upon receipt of payment of all outstanding maintenance fees.

Taylor v. U.S. Patent and Trademark Office, Case No. 2009-1133 (Fed. Cir. Aug. 4, 2009)

PTO provides "clarification" on patent attorney/agent fee

Last year, the PTO announced an annual fee (initially set at $118) to be paid by patent attorneys and agents. See 73 Fed. Reg. 67750. The PTO has now "clarified" that it has not decided whether or not it will be collecting the fee for fiscal year 2009 (which ends September 30, 2009).

The agency has not issued a notice to pay the annual practitionier maintenance fee for FY2009, nor has it required payment of the fee by September 30, 2009. No decision has been made to collect the fee in FY2009.

See the full release here.

Patent and Trademark Office opens e-Office Action program

USPTO Takes Another Step Closer to Full Electronic Patent Application Processing

e-Office Action provides faster, more efficient notification to patent applicants

WASHINGTON - The Commerce Department’s United States Patent and Trademark Office (USPTO) announced today the implementation of the e-Office Action program following a successful pilot project. Under the program, patent applicants receive an e-mail notification of office communications instead of paper mailings. An e-mail is sent to program participants when new office communications are available for viewing and downloading in Private PAIR, the patent application information retrieval system that allows applicants electronic access to the entire file history of their applications.

“We received very positive feedback from applicants who participated in the pilot program,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO John Doll. “Not only have we dramatically reduced paper processing and mailing costs but also expedited notification allowing applicants to take full advantage of their time period for reply to an office action.”

The e-Office Action program minimizes the possibility of lost or delayed postal mail and makes it faster and more efficient for participants to process and docket USPTO communications in electronic format, thus reducing processing costs. During the pilot, participants were able to retrieve office communications several days faster than postal mail. Participants in the pilot program have also suggested several enhancements to the system which will be under consideration for future implementation as the IT infrastructure is strengthened.

Participation in the e-Office Action program is optional and open to any registered attorney or agent of record, or pro se inventor who is a named inventor, in a patent application associated with a customer number. Program participants also will have the flexibility to opt-out of the e-Office Action program at any time and return to receiving office communications through the postal mail.

The program includes provisional applications and non-provisional applications including utility, plant, design, and reissue applications and national stage applications. International applications, reexamination proceedings, and interference proceedings are not included in the program.

Full details are here.

The press release is here.