USPTO, Small Businesses Talk Patent Reform, Harmonisation, Fee Diversion
By Liza Porteus Viana for Intellectual Property Watch on 02/11/2011 @ 4:02 pm
The United States Patent and Trademark Office (USPTO) is working to ensure small businesses and independent inventors have the tools they need to obtain, protect and enforce their patents overseas, as well as domestically, in the wake of patent reform legislation enacted in the United States. Meanwhile, the office is also stepping up global patent harmonisation efforts.
“The law has already caused some important changes to our intellectual property system,” David Kappos, undersecretary of Commerce for intellectual property and director of the USPTO, said during a Monday webinar with senior USPTO officials focused on the America Invents Act  (which the USPTO refers to as the “AIA”). He further noted that the USPTO has already begun to work on new protections needed to move businesses forward in patent protections. “We are off to a good start. We’ve had good interaction with the IP community … and we’re continuing to move forward, I think, quite well.”
Kappos said progress had been made on the estimated 700,000 patent application backlog; the goal is to reduce the backlog to 350,000. “We’ve got a few more hundred thousand to whittle away,” he said.
The USPTO is working on a joint project with the European Patent Office (EPO) to develop a classification system for inventions that will be used by both offices in the search and examination of patent applications. Called the Cooperative Patent Classification (CPC) initiative, the two offices plan to start using the CPC on 1 January 2013.
The CPC will be “transformative to our efficiency,” Kappos said. The US is “re-engaging and re-energising harmonisation discussions,” added USPTO Chief Counsel Bernard Knight.
This week’s launch of the CPC website  “is a first significant achievement on the way to greater harmonisation in the patent system,” EPO President Benoît Battistelli said in a statement. “The innovation market is a global market, and in order to efficiently support it with a quality-based patent system, it is essential that patent offices in the large economic regions align the procedures and tools.”
Kappos also said the USPTO plans to open several satellite offices across the US, including in Detroit, Michigan, at which people can meet with patent examiners one-on-one, come in for interviews, or even where appeals could take place. Where the satellite office is located could indicate the specialty areas in which those examiners focus – for example, examiners in Detroit may be more specialised in mechanical engineering and material sciences, than examiners in other parts of the country.
“We intend to implement a nationwide workforce,” Kappos said.
Kappos: AIA ‘By No Means’ Ends Possible Fee Diversion
The USPTO wants to hire 1,500 new examiners to get patent pendency down to 10 months by 2014 – provided the agency has full access to its fees.
The issue of fee diversion was a major sticking point in the months leading up to passage of the AIA. USPTO and many stakeholders wanted iron-clad language in the bill that would not allow any fees collected by the agency over what it was appropriated in the beginning of the budget year to be diverted to other agencies and/or other uses. Such fees have, in the past, been diverted to non-USPTO uses. Knight noted that Section 22 provides that any fees collected above those appropriated go into a reserve fund for the agency.
“Those fees cannot be used for any other use by Congress until they’re later appropriated by the agency,” Knight said, adding that he has seen some advance copies of congressional appropriations acts for 2012, and “all of the advance copies say the PTO will be appropriated all of its funds … Congress is being true to their word here and appropriating all our fees.”
But Kappos said: “We recognise that by no means does the legislation completely address the possibility of future diversion of agency collections.”
“So far, so good with current year appropriation. There are a number of other issues that come up … [as to] whether future appropriations will be enough.”
Small Businesses Voice Need for International Protection
Monday’s webinar was one of several public hearings and meetings to collect information from intellectual property owners and other stakeholders on AIA issues, including the scope of prior user rights, and international patent protection options for small business. These forums also provide the USPTO the opportunity to update the IP community on implementation of the AIA.
The AIA instructed the USPTO to conduct seven studies, focusing on: International patent protection, prior user rights, genetic testing, misconduct before the USPTO, satellite offices, virtual marking, and implementation of AIA. The USPTO also looking into a type of pro bono program for lower income inventors who can’t afford the patent application fees.
“Together, under the America Invents Act, we have the chance to redefine the procedure for which an inventor secures patent rights in the United States,” USPTO patent reform coordinator Janet Gongola said during a 27 October agency public hearing on international patent protection for small business.
The link to the meetings is here .
USPTO studies and reports on prior rights and international protection options for small business studies are due to Congress by mid-January; the USPTO will accept comments until 8 November. The agency, in conjunction with the US Small Business Administration, is trying to assess general costs for small and medium-sized businesses of overseas filings, and how those costs affect firms’ bottom lines and their ability to create new products.
Many small businesses, for example, may not know what tools they have available to enforce patents overseas, leaving them unable to defend their inventions against foreign lawsuits. Many say they also can’t afford to pay the international filing and other application fees, or for services such as translation.
“It’s no question that information and commerce are cutting across global borders with increasing speed,” Teresa Stanek Rea, deputy undersecretary of Commerce for intellectual property and deputy director of the USPTO, said during the 27 October hearing. ”As innovators seek to tap markets abroad, it’s imperative that the international patent system provide a consistent, cost-effective way to obtain reliable patent rights in multiple jurisdictions.”
Stanley Erck, CEO of vaccine maker Novavax, testified  on behalf of the Biotechnology Industry Organization (BIO), which is comprised of both small and large biotechnology companies. He noted that small biotech companies in the United States hold about 80 percent of the development pipeline for new medicines and other bio-based products, and that many of those products are exported. It’s often helpful for companies to have larger partners in the US and abroad to help bring their products to market, particularly if a foreign affiliate can secure foreign regulatory approval and market the invention in that market.
“In each case, such partnering depends on robust patent rights that will secure all partners a return on investment,” Erck said.
The biggest challenges facing small biotech companies when filing for patents internationally, Erck said, include: a costly international patent procurement process; complicated foreign biotech patent prosecution; and patent claim scope can differ from country to country, which increases the cost of filing. He noted that countries such as China are helping to defray small businesses’ costs for both domestic and international filing.
“For our small businesses, securing IP protection is as important as obtaining laboratory equipment, leasing space, or hiring creative, dedicated employees,” Erck said. “Extending the range of public assistance programs to patent rights for small businesses would help small biotechs spend money normally allocated to patent filing and prosecution elsewhere.”
The USPTO on Tuesday held a session in Palo Alto, California, to focus on how to use intellectual property rights to expand and protect one’s business abroad.
Obama Spurs on Small Business Pilot Program
Meanwhile, on 28 October, President Obama directed all federal agencies with research facilities to improve the transfer of research from their labs to the marketplace. Working with the National Science Foundation (NSF), the USPTO is piloting a program to provide Small Business Innovation Research (SBIR) awardees with comprehensive intellectual property support through the agency’s small business programs and resources.
Through the SBIR pilot program, which launched 11 October, USPTO’s Global Intellectual Property Academy will begin offering monthly webinars covering an array of IP topics. USPTO has also provided its new IP Awareness Assessment tool to its first group of 20 awardees to help inventors and companies assess their IP strategies.
“For many small, innovative companies, the ability to grow, hire new employees, and compete effectively in the global marketplace hinges upon securing patent and trademark protection,” Kappos said. “Patents have become increasingly vital to securing the financing and investment needed to build and scale businesses.”
Article printed from Intellectual Property Watch: http://www.ip-watch.org
URL to article: http://www.ip-watch.org/2011/11/02/uspto-small-businesses-talk-patent-reform-harmonisation-fee-diversion/
URLs in this post:
 America Invents Act: http://www.uspto.gov/americainventsact
 CPC website: http://www.cpcinfo.org
 is here: http://www.uspto.gov/aia_implementation/index.jsp
 testified: http://www.bio.org/advocacy/letters/novavax-ceo-testifies-bios-behalf-importance-ip-rights-internationally-small-busine
 Small Business Innovation Research : http://www.sbir.gov/
 Patent Reform Has USPTO’s Trial And Appeal Board At The ‘Centre Of A Storm’: http://www.ip-watch.org/2011/12/08/patent-reform-has-usptos-trial-and-appeal-board-at-the-centre-of-a-storm/
 2010 US Industry Group Priorities: Patent Reform, USPTO Funds, Genes, Green Tech: http://www.ip-watch.org/2010/01/26/2010-us-industry-group-priorities-patent-reform-uspto-funds-genes-green-tech/
 New USPTO Post-Grant Review A Small Step For Patent Harmonisation: http://www.ip-watch.org/2012/10/18/new-uspto-post-grant-review-a-small-step-for-patent-harmonisation/