Beware of Solicitations Appearing to be from the USPTO

Posted on February 27, 2012 by Melanie Martin-Jones

The US Patent and Trademark Office (USPTO) has posted a warning on its website regarding solicitations that appear to be official notices (Click here for a sample). The notices come from private companies that are not associated with the USPTO. 

The notice is typically made to resemble an official notice from the USPTO by including the trademark serial or registration number, classes, filing dates and other information that is publicly available on the USPTO's database.  Most of the notices appear to be an invoice stating an amount "due".  If you read the fine print (if it is even included), the fee is not for a legitimate government fee, but for legal services, trademark monitoring services, Customs recordation services or inclusion in a private registry.

Trademark owners who receive such a solicitation may file a complaint with the Federal Trade Commission at www.FTC.gov. The Trademark Office also provides an e-mail for reporting misleading communications at TMFeedback@uspto.gov.

The Trademark Office notes that all of its correspondence is from the “United States Patent and Trademark Office” in Alexandria, VA (if by e-mail, from the domain @uspto.gov).  If you are represented by an attorney, most likely all government fee notices will come from your attorney.

We often get a call or email when a client receives such solicitations – hopefully if you receive one, you will check with us prior to submitting payment. 

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Prioritized Examination of Patent Applications Under Leahy-Smith America Invents Act

Posted on November 2, 2011 by Martin Miller

The Leahy-Smith America Invents Act ("AIA") was enacted on September 16, 2011. The changes implemented by this Act are wide-ranging and significant, and different provisions have different effective dates, with many taking effect September 26, 2011, September 16, 2012, or March 16, 2013. We will be providing additional information in the coming weeks and months.

One of the more immediate and interesting aspects of the AIA is the creation of a prioritized examination process which allows applicants to request accelerated examination in exchange for payment of an additional fee. While the U.S. Patent Office had proposed to implement accelerated examination earlier in 2011, that proposal was suspended due to funding limitations. Not only does the AIA now explicitly provide for prioritized examination, it also mandates that the additional fees paid for prioritized examination are automatically credited to the Patent Office's appropriation account—thus providing the additional funding needed for implementation.

Normally, patent applications are examined in the order they are received. While it varies greatly by technological area, on average it currently takes 28 months for the U.S. Patent Office to issue a first office action. The new prioritized examination track, on the other hand, is intended to result in a notice of allowance or final rejection within 12 months of prioritized status being granted. In theory, the first office action should therefore issue within about 6 months from the application filing date—almost two years sooner than is typical under the normal examination track.

So what's the catch? Perhaps the biggest is the additional fees required for prioritized examination: $5,230 (reduced to $2,830 for small entities). That's in addition to the normal application filing fees. Thus, the total fee due on filing an application for which prioritized examination is requested is $6,480 ($3,360 for small entities), not including any excess claim or application size fees.

Prioritized examination is only available for original utility or plant patent applications filed on or after September 26, 2011. However, for applications pending prior to that date, it is possible to file a continuation or divisional application and request prioritized examination of that application. Additionally, while prioritized examination is not available to a national stage entry of a PCT application, it is available for a continuation application claiming priority to a PCT application which designates the United States.

In addition, the application must be complete on filing (including the request for prioritized examination, acceptable drawings and payment of all applicable fees), must be filed electronically, and must contain no more than four independent claims or thirty total claims. During prosecution, an application will lose its prioritized examination status if: (1) an amendment results in more than four independent claims or thirty total claims; (2) a petition for an extension of time is filed; or (3) a notice of appeal or request for continued examination is filed.

It is unclear how many applicants will take advantage of prioritized examination, or whether or not the U.S. Patent Office will be able to consistently meet its goal of completing the examination process within 12 months. Because of these uncertainties and the continuing need to hire additional patent examiners, the prioritized examination program is limited to 10,000 applications during at least the first year of implementation.
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Track One Expedited Patent Examination Program Postponed

Posted on April 21, 2011 by Jim Liles

According to a message to USPTO Employees from Director David Kappos, the Track One expedited patent examination program (discussed in this earlier post), scheduled to go into effect on May 4, 2011, is postponed until further notice.  As reported in Hal Wegner's newsletter, the cancellation is due to budgetary cuts and whether and when prioritized examination may be reinstated is unclear.

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New Fast Track Examination at the USPTO

Posted on April 13, 2011 by Holly Kozlowski

Beginning May 4, 2011, a US patent applicant can request prioritized or "fast track" examination at the USPTO under the newly promulgated "Track 1" procedure of 37 C.F.R. 1.102(e). To obtain the Track 1 prioritized examination, the following conditions must be met when the application is filed: (1) the application must be an original utility or plant non-provisional application (i.e., this procedure is not available for international national stage entry applications, design applications, reissue applications, provisional applications, or reexamination proceedings, but is available for continuation and divisional applications, including a continuation application of an international application designating the US); (2) the application must be filed with an executed inventor oath or declaration and all applicable filing and publication fees; (3) the application must not contain more than four independent claims, more than thirty total claims, or any multiple dependent claims; and (4) a request for prioritized examination must be filed together with a $4000 filing fee and a $130 processing fee. Currently, there is no reduction in the $4000 fee for small entity applicants.

The USPTO indicates that it will only grant a maximum of 10,000 application requests for prioritized examination in fiscal year 2011, which concludes September 30, 2011.

Once an application is granted the prioritized status, the application will be placed on the examiner’s special docket throughout its course of prosecution until a final disposition is issued. A “final disposition” is defined to mean (1) mailing of a notice of allowance; (2) mailing of a final Office action; (3) filing of a notice of appeal; (4) declaration of an interference by the Board of Patent Appeals and Interference (BPAI); (5) filing of a request of continued examination; or (6) abandonment of the application.

A word of caution: If an extension of time is taken for any response, prioritized examination will be terminated. Also, prioritized status will be lost if the application is amended to include more than four independent claims, more than 30 total claims, or any multiple dependent claims.

The USPTO's goal for Track 1 applications is to provide a "final disposition" within 12 months of prioritized status being granted. However, this is a goal, not a guarantee!

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