Obama FY2011 Proposed Budget for the USPTO (Including at Least a 15% Increase in Fees)

  • USPTO estimates $2.322 billion in revenue for FY2011. FY2009 USPTO revenue was $1.901 billion and FY2010 revenue is projected at $2.003 billion. 
  • The jump in expected revenue is largely based on a proposed 15% increase in user fees. According to the budget statements, the increase is “intended to be an interim measure.”  However, I would not expect fees to drop again any time soon.
  • Justifying this increase, the administration indicates that it has set a “high priority goal” of reducing “patent pendency for first action and for final actions from the end of 2009 levels of 25.8 and 34.6 months respectively by the end of 2011, as well as the patent backlog.”
  • USPTO would also be given full access to its fee collections up-to $100 million over-budget.
  • USPTO would also be given authority for FY2011 to increase fees beyond the 15% at its discretion.
  • A Wall Street Journal article cites Commerce Department officials as indicating that the increased funding will allow the PTO to “reinstate overtime and hire 1,000 new examiners.”  Director Kappos has also indicated that updates of the USPTO IT system is necessary. [Link]
  • The budget also estimates $36 million for the Court of Appeals for the Federal Circuit.
  • Read the Budget here.

 

84 thoughts on “Obama FY2011 Proposed Budget for the USPTO (Including at Least a 15% Increase in Fees)

  1. 84

    Krispy, you’re hilarious. Another govn’t employee I see. Circle the wagons, there’s someone qeustioning whether the govn’t is doing things the best way.

    If you weren’t so blinded by being on the govn’t dole, you’d see that many people here are advocating for Examiners having remote offices in lower cost of living areas, giving the PTO ALL of the fees it collects ALL of the time, and other solutions.

    But whatever. It’s obvious that it’s standard practice to govn’t employees to plug their ears and yell “NEENER NEENER NEENER” when a non-govn’t employee proposes an idea. So have fun with that.

  2. 83

    @ MY attorney – the pay scale is shown in the USPTO Part II post and the current pay scale is in the comments.

    @ Lazarus – don’t waste your time, the commenters complaining above are impervious to logic or reason. The complaints aren’t founded on anything other than bitterness and a desire to see PTO employees suffer.

  3. 81

    Above posters say that examiners need to do better quality (I agree).

    The questions I have for you are:

    1) “How much time should an examiner get, on average, to examiner a case from start to final disposal?” and

    2) “How much time should be spent on searching?” (I think that this is the most important part of examining. All else leads from here. Bad searches result in bad actions.)

    Now, before people say that different techs need different amounts of time, I say you are right. The time to do a doorknob application is really different than doing a bio application. And the hours will vary greatly between a new GS 7 examiner and a primary. But for this assume that all cases are equal in difficulty and are the “average” case for the PTO as a whole and the examiner is a primary.

    Now as to the backlog & the math.
    Using info from link to uspto.gov as well as the spreadsheet that can be downloaded the following numbers are given.

    For EOFY 2009 (end of fiscal year):

    filings in 2009 = 461000 applications
    examiners = 6143
    total backlog = 718835 applications unexamined

    Thus, on average, each examiner must start AND finish 75 cases each year to have the backlog remain steady(461000/6143). (This is 150 counts if all are new applications, less if some are RCEs) Any amount over 75 applications will decrease the backlog by a corresponding amount.

    In one year there are 2080 “work” hours (26 pp x 80 hrs/pp).
    However, once all the “other time” (holidays, vacations, sickness, training (giving and/or receiving), meetings, interviews, etc.) are taken out the amount of actual “examining time” is much less. The office shoots for an average of 80% examining time. This would be 1664 hrs/FY/examiner. In reality, the average examiner is closer to 77% which is 1601 hrs/FY/examiner.

    So, even if we use the 80% examining time, this still means that an examiner would get, on average, only 22.19 hours per application (1664/75) (NOT per action, but per application).

    The time to read the spec & claims, do a complete search, evaluate the art, write the action, respond to the applicant, and make a final or allow, and any other actions is only 22 hours. TOTAL. If an examiner is working over 100%, that means that they are either doing it on their own time or are taking less than the 22 hours/case average.

    Do you all really think that 22, or less, hours are sufficient to properly and completely examine an application to your satisfaction?

    Now, all of this does nothing to reduce the backlog. It only is steady-state. Adding in a couple 1000 examiners over the next few years will increase the number of applications that can be examined and disposed of without further lowering quality. And the longer these examiners stay the greater impact they will have. Right now, the number of examiners is pretty close what is needed to maintain a steady-state to the backlog assuming no major change to the amount of filings.

    Think about all of this when you throw out ideas like not needing more examiners or cutting hours to less than what they are.

    thanks,
    LL

  4. 80

    They will waist the money

    Clearly the problem is that prosecutors are so smart and examiners are so dum.

  5. 79

    Meh, you like da ham and eggs? Here, here is a heaping helping of the same. Same run around, maybe a faster churn. They will waist the money on yet another white elephant of a search system and still have the CRU ripping apart the agency’s own work. Maybe pto will now have the funding for that vital 108th separate ground of 103 rejection by the inter parties panel. What a mad house.

  6. 78

    And as Dennis has pointed out, no one has yet attempted to show why the problems keep getting worse despite a doubling of funding over the last 10 years or so.

    Gee, maybe it has something to do with the number of applications being filed, and the content of those applications (size, quality, and subject mater)?

  7. 77

    Many of the preceding posts argue that there is no need to hire more examiners to get rid of the backlog. They also suggest increasing the workload (production) of examiners as a solution. However, they also argue that the quality of office actions are very low.

    These posters apparently do not see the internal conflicts between these 2 positions.

    If production is increased what do you think will happen to (often all too low) quality? It will get worse. And an examiner only need to be @ 95% to be satisfactory.

    For better or worse, the PTO, & the rest of government, is not the same as a business. Employees have protections that make it much harder to do things that the public sector might do. In a law firm, if a junior associate does bad work over a number of cases you might be able to fire them with cause. In the PTO, you need to establish an error rate greater than acceptable (where the errors are often fought tooth & nail by POPA no matter how bad), then you need to give a warning & a 3 month improvement period. If their error rate does not become acceptable over that time they get ANOTHER 3 month period to improve. If they still do not, only then “might” you be able to remove them for cause. And even then POPA will probably still fight for the examiner. Those are simply the facts of life in the PTO & govt. as a whole.

    The only way to reduce the backlog is to dispose of applications at a higher rate than they are being filed. So, you need to increase output or decrease input. That is pretty basic.

    Clearly reducing input is counter-productive to both the PYO and the country as a whole. That is NOT the route to go.

    Thus, there needs to be an increase in the rate that applications are disposed. Emphasizing the early indication of allowable material and doing the best possible search & 1st action will help. But this will only help so much. And not enough, in my opinion, to close the gap & reduce the backlog of unexamined applications.

    The hiring of additional of examiners over the next few years, as well as their retention and the improvement in the current work product should be sufficient to reduce the backlog.

    Even simple math will show that if X examiners dispose of Y applications then X+A examiners will dispose of Y+B applications, where Y+B>Y.

    Yes, this will reach a point of diminishing returns (because of training time/costs if nothing else), as well, but in the short term this appears to be the best solution to reduce the backlog.

    I’ll follow this post with some math to back up some of these points.

    thanks,
    LL

  8. 76

    Gena777, to date, the problem has not been funds, but mismanagement. And as Dennis has pointed out, no one has yet attempted to show why the problems keep getting worse despite a doubling of funding over the last 10 years or so.

    A good manager would accept the challenge and fix the issues before demanding more money. We’re about to see what kind of manager Kappos is.

  9. 75

    This item and the news about the USPTO’s expedited PCT-PPH examinations cause one to almost dare to hope that the agency’s backlog and pendency problems may finally start to become resolved. This could work wonders for patent law. It’s unfortunate to have to pass the costs onto innovators, but by all accounts the US patent law system is in such disarray (at least at the application stage) that it’s become critical to address the USPTO’s serious underfunding issue — using almost any means necessary.

  10. 74

    NWPA Then, and maybe I am remembering wrong, the government took a haircut too. …Now, it seems like the government has gone into the untouchable class.

    There have been plenty of Federal government cutbacks over the last year. I don’t see any evidence of an “untouchable class”. Are you sure you aren’t confusing “the government” with the military?

  11. 73

    >>it is hardly a new result that the government >>(and DC generally

    I know. I lived in DC on and off my whole life. I just think this is different then in 1980’s when it was real bad too. Then, and maybe I am remembering wrong, the government took a haircut too. Now, it seems like the government has gone into the untouchable class.

  12. 72

    NWPA, it is hardly a new result that the government (and DC generally) does better during a recession than other parts of the country. It isn’t particularly surprising either.

    Hmm…sorry, but the solution to the PTO’s problems is a 10% pay cut across the board with a 10% hike in productivity expected for each examiner. That is what has happend in the real world.

    You mean in the private sector? The PTO is not the private sector.

    But taking your argument to the next logical steps, can we fire Clarence Thomas? He seems like the least productive Supreme Court Justice by a long shot.

  13. 71

    the solution to the PTO’s problems is a 10% pay cut across the board with a 10% hike in productivity expected for each examiner.

    You can read an OA as well as I can. You know that examiners already don’t have enough time to do proper searches and properly articulate their rejections. That, in turn, results in agents responding to what the examiner said but didn’t really mean, leading to final actions based on what the examiner really meant (but still doesn’t have the time to say), leading to RCEs and increased pendency, which feeds on itself and makes the whole situation worse.

    Cutting examiner pay will only result in unhappy and vindictive examiners, which is the very last thing you want in a government agency standing between your client and his rights. Besides, you have to pay them well enough that good people will want to do the job, not just people who couldn’t make it in private practice.

    The solution is to treat examiners like people, to want them to succeed at their job (allowing the good applications and rejecting the bad ones), and giving them the resources they need.

    And, fire the bottom 10% of examiners. That is what has happened in the real world. Even at the best IP law firms.

    Law firms probably should have fired their bottom 10% long ago, but they never actually did it until they were short of work.

    The PTO is not short of work. That’s what makes it special. When you have more work, you hire more people to do it. If necessary, you offer more pay to attract the number of qualified people you need. Law firms understand this principle very well.

    I mean, yeah, fire the really bad examiners. But you can’t know which are the really bad ones till you give them enough time to do a decent job and they still fail.

  14. 70

    And, fire the bottom 10% of examiners. That is what has happened in the real world. Even at the best IP law firms.

  15. 69

    >>That’s because this particular government >>employee is in a successful and growing line >>of business, whereas the “middle class” >>private practice attorney is in an >>increasingly overpopulated and increasingly >>commoditized line of business.

    So, the private practice that deals with patents is “overpopulated” commoditized, but the government sector that deals with patents is somehow special? Hmm…sorry, but the solution to the PTO’s problems is a 10% pay cut across the board with a 10% hike in productivity expected for each examiner. That is what has happend in the real world.

  16. 68

    Begging for a bailout and then touting your performance in the same post is just comical.

    Yes, that would be comical.

    Just a few questions, though.

    1) What bailout? That thing where the PTO gets to keep the fees it charges for its own services?

    2) What part of my post sounded like “touting my performance” to you? Was it the bit about the increasingly commoditized business or the imaginary 8-figure bonus?

    3) Don’t you think the PTO should be run like a business? What’s wrong with making it self-sustaining and able to handle its incoming workload? It’d be a whole other thing if it were simply running a deficit – that would be made up by some other branch of the government. The current situation is much worse – people aren’t getting their patents. That is clearly a failure of the system.

  17. 67

    IANAE, it’s hilarious when you talk like the PTO is a business. Begging for a bailout and then touting your performance in the same post is just comical.

  18. 66

    Then let’s see where the Office goes from there.

    We already see where the Office goes from there. They have a proposal that costs more than that. Therefore, where the Office goes from here is saying they still can’t do their job without even more money.

    Sure, if fee diversion had ended some years ago (and the money had been spent wisely, etc.), they wouldn’t be in the bind they are today and they wouldn’t need as much extra help now, but it’s too late to change that now.

    The point is that the private sector is having to do more with less and be paid less, and the government employee is not suffering in kind with the middle class.

    That’s because this particular government employee is in a successful and growing line of business, whereas the “middle class” private practice attorney is in an increasingly overpopulated and increasingly commoditized line of business.

    It doesn’t make sense to insist that people in the fastest-recovering sectors of the economy should suffer because the rest of the economy is bad. The recovery has to start where it starts. If PTO execs start taking home 8-figure bonuses, feel free to complain about that.

  19. 65

    In-house >>Mooney – I enjoy reading your perspectives

    Mooney separates patents into information processing patents (all junk), and his chemical patents, some junk, some not.

    He is a complicated beast.

  20. 64

    >>The point is that this particular government >>department is seriously overworked, its >>backlog is bad for the country, and it makes >>good economic sense to hire more people to get >>the job done sooner.

    The point is that the private sector is having to do more with less and be paid less, and the government employee is not suffering in kind with the middle class.

    That is significant.

  21. 63

    IANAE, how about we just start with eliminating the fee diversion issue. That’s a pretty good bump. Then let’s see where the Office goes from there.

  22. 62

    7, I’ll bet you didn’t make 4-5x the avg govn’t income (since it’s now 2x the avg private income). LOL.

  23. 61

    Mooney – I enjoy reading your perspectives, and I was baiting you. With my made-up facts, I was trying to determine whether your complaints about the USPTO issuing “invalid” patents was simply that you were anti-patent. If it was, I would have expected your answer to chastise me as I was trying to assert a “known invalid” patent. But you didn’t. You suggested that I exploit the patent (and the system) to my benefit.

    As you know, idealogoy cannot be reasoned with. But now I know I can reason with you. Keep your viewpoints coming.

  24. 60

    the point is that the government employees are getting raises and the middle class is either staying the same or losing ground during this recession.

    The point is that this particular government department is seriously overworked, its backlog is bad for the country, and it makes good economic sense to hire more people to get the job done sooner.

    It may well be a government agency, but the hiring projections you see here are pure organic economic growth. Supply growing to meet demand, with job creation all along the way. If the PTO had been a private company, it would have hired all those extra examiners years ago.

  25. 59

    Are you practitioners really seeing filings fall further? My work is ramping up again. I have more new applications queued up than I’ve had in a long time, and they keep pouring in. Granted, I haven’t raised my rates in a couple of years, but given this recession, I’m not about to complain.

    NWPA, I guess it depends on what your definition of middle class. Last year was not a good year for me at all, and I still made 4-5x the U.S. median income.

  26. 58

    And, Ezekiel, please don’t characterize my case. Try to make your little points and sputter along as best you can without thrashing your foul nails in my hide.

  27. 57

    Ezekiel, the point is that the government employees are getting raises and the middle class is either staying the same or losing ground during this recession.

    Yes, Ezekiel, the people that do the work for patents in the private sector are in the main middle class. They are losing ground this year.

    Your argument that sorry fellas the raises are built in so it has nothing to do with me. No one that has to earn a living in a free market (such as it is)would think like that.

    Sorry, Ezekiel, but this is a sea change. Obama is saying to the middle class that the goverenment is going to thrive through this recession while the middle class loses ground. That is something that did not happen in the 1980’s recession.

  28. 56

    As usual, NWPA is making up straw doomsday scenarios to argue against. What exactly does a 15% increase in patent filing fees have to do with the middle class? The post clearly states that the fee increase is, inter alia, to hire more examiners. It does not allude to paying existing examiners more. The pay increase mentioned by Another Examiner is a cost of living increase mandated by Congress a long time ago (not Obama) and the only way it can be reduced or eliminated is if the cost of living does not go up or Congress eliminates it. Patent attorneys are not middle class; new examiners are. Thousands of new middle class jobs generated not from tax money but from increasing fees paid overwhelmingly by corporations – yeah, sounds like the middle class is really getting the shaft here. I would characterize your failpile of a comment as desperate, not government employees or the Obama administration.

  29. 55

    Another examiner, most of the middle class is either staying the same or has lost income.

    What is noteworthy in my view, is this is the first severe recession I’ve seen where the government has decided that it is in the same position as the fat cats and cuts into the middle class. It is a change that is worth noting. Obama seems to fit this under the rubric of stimulus. It is a kind of trickle down theory. We will tax and borrow and pay the govenment employee high wages and it will trickle down to the middle class. It isn’t just the federal employees, it is all the local and state employees too. At least where I am.

    A sinking ship with lots of desperate people willing to stand on the shoulders of those whose noses are inches from sucking in water.

  30. 54

    Kevin R., I am all for colluding in light of the PTO’s arbitrary 15% increase. However, like last year, and this year, we all eye each other like the the good, the bad and the ugly, waiting for someone to make the first move. Meanwhile, back at the ranch, clients are constantly asking for “estimates” before beginning work on some matter. A clever way to cap the fees (often backfires on them with regard to quality of work).

  31. 53

    WHOA – calm down everyone! it’s okay. let’s just all agree increase our billing rates by 15 percent too. the glass is half full here. now, does anyone know anything about antitrust law?

  32. 52

    MM, In-house is obviously baiting you. No serious in-house attorney with half a brain would propose not settling in those hypothetical circumstances. If In-house attorney really believes its better for his client to have the patent invalidated then settle, there is nothing more you can say. That position is absurd and In-house’s (most likely imaginary) employer should seek a replacement for In-house ASAP.

  33. 51

    “Why not give a 15% across the board raise to alll governement employees too. Why they work so hard. I heard that once a government employee had to work past 5:03 p.m.”

    Not fair. I work extremely hard at this job. I’ve worked much harder here than in the private sector (and even harder sometimes than when I was in the military)

    “shocking to me that government employees are getting 5% raises”

    Nope…only 1.5% this year. And it’s still very expensive to live in the DC area.

  34. 50

    in-house: the issue I was trying to tease out was how can you espouse settlement to litigation to preserve the validity of a “known” invalid patent on one hand, and on the other hand, continue to whine about all the “known-to-be-invalid” patents which issue from the USPTO?

    How could I do that? I guess I would move my fingers and the words would appear in a comment and then I would hit post. You seem to believe that there is some profound contradiction between my telling you, on one hand, that you should have settled so that you (or your client) would still have a patent that you (or your client) could theoretically license to others and, on the other hand, my belief that the PTO issues a lot of junckola. Can you explain to me what that you believe the contradiction to be?

    Also, if I told you that I hated McDonald’s, would you also wonder “how” I could walk by a McDonald’s without putting my fist through the window? Because I walk by all the time and it never occurred to me to put my fist through the window. Does that make me a hypocrite?

    I despise condescending remarks!?

    Then stop playing “gotcha” with half a deck.

    I should have known from your discussions with NAL that you would never give a response to the issue at hand.

    LOL. The issue “at hand” was your bogus story about the 30 references. I remarked on your your ill-advised litigation strategy. Then you asked me several questions and I responded to them directly. Go ahead and read the thread again. Or I suppose you could pretend that I’m “running away” from something. Whatever makes you feel good. That’s what matters. Right?

  35. 49

    My guess is Mooney didn’t want to argue the specifics of a case that you were obviously making up as you went along.

  36. 48

    mooney – I should have known from your discussions with NAL that you would never give a response to the issue at hand.

    Focus- the issue I was trying to tease out was how can you espouse settlement to litigation to preserve the validity of a “known” invalid patent on one hand, and on the other hand, continue to whine about all the “known-to-be-invalid” patents which issue from the USPTO?

    And please, pardon my apparent confusion. I so look forward to the opportunity to be educated by the magnificent mooney about the differences between enforceability and validity of a patent under US law.

    I despise condescending remarks!? Don’t you?

  37. 47

    examiners are marketing, hustling up clients, keeping clients happy and collecting money from clients?

  38. 46

    Free. Buy one get one free.If you are not satisfied, your money back.

    Attorneys will do the same to their clients.

    A lot of times, examiners are doing the job for attorneys, but examiners don’t get paid as well as attorneys.

  39. 44

    I would like for the Director to explain exactly where the extra fees will be spent and how this will improve service before any new fees are charged applicants.

  40. 43

    BJA I’ve taken a 1/2 reduction in fees on most of my work in the last few years. How about you take a 1/2 cut too? Let’s make it cheap together.

    Just because the demand for patents remains high, doesn’t mean the demand for your services should remain high. There is just one PTO but there’s a lot of patent attorneys and agents out there. More than ever, in fact.

  41. 42

    It’s clear that you’re just another blowhard who has absolutely no idea what goes on in private practice with corporate clients.

    One thing I know for sure is that when you have nothing to draft it doesn’t help to also have no OAs to respond to.

    Another is that corporate clients won’t care about a 15% fee increase when it’s still immaterial compared to your hourly rate. Your 1/2 reduction in fees should clue you in that you’re the most significant expense in this process.

    Faster examination (if it’s ever achieved) should be good for private practice. It will mean more filings, better cash flow throughout the process, and fewer abandonments because technology has moved on before the patent has issued. Sure, that’s long-term stuff that doesn’t help you today, but you should still be in favour of it.

  42. 41

    IANAE, quit pretending to have ANY idea what you’re talking about.

    You’ve opened your mouth and removed all doubt as to whether you were a fewl.

    It’s clear that you’re just another blowhard who has absolutely no idea what goes on in private practice with corporate clients. I’ve taken a 1/2 reduction in fees on most of my work in the last few years. How about you take a 1/2 cut too? Let’s make it cheap together.

  43. 40

    in-house If the purpose is to improve overall patent quality (whatever that means), shouldn’t I be forced to litigate to the end and not be able to settle?

    Even better you should be killed by the government so that you never assert another bad patent again! Anything that furthers The Purpose! Anything and everything!!!!!

    Seriously, friend, all I was saying was that you would have benefitted by settling. Consider it a lesson for next time, at least. The pros settle all the time.

    It looks like the court agrees and will invalidate my patent. Your advice is to me is to quickly settle with the infringer so as to avoid a court rendering its determination of invalidity?

    My advice would be to settle even before the court “looks like it agrees” or hey, do some diligence before going to court and figure out what a reasonable license looks like. Correct me if I’m wrong, but isn’t this a business model for a significant number of patentees seeking to make money off their IP? Unless something has changed dramatically, most asserted patents settle before trial.

    By the way, you appear to be confusing “enforceability” with “validity.” Just fyi.

  44. 39

    How is your advice (settling so as to avoid invalidating the patent) consistent with your views that US prosecution allows too many “invalid” patents to grant?

    I don’t pretend to speak for Malcolm, but if the strategic approach to litigation gives patentees cash settlements on bad patents and prevents those bad patents from being invalidated in court, surely that’s a great reason to make sure the PTO doesn’t grant more of them.

  45. 38

    Mooney: Let me get this straight so I understand. During the litigation the potential infringer challenges the validity of my patent for I.C. reasons. It looks like the court agrees and will invalidate my patent. Your advice is to me is to quickly settle with the infringer so as to avoid a court rendering its determination of invalidity?

    If the purpose is to improve overall patent quality (whatever that means), shouldn’t I be forced to litigate to the end and not be able to settle?

    How is your advice (settling so as to avoid invalidating the patent) consistent with your views that US prosecution allows too many “invalid” patents to grant?

  46. 37

    This will hurt in the short term.

    Not if you have corporate clients. Your fees are still way higher than the PTO fees, and the 15% increase will barely be material to their budget.

    In the long term, the effect will depend on how well the money is spent.

    I think we can all agree on that. It’s also the answer to NAL’s “Increased hiring is not the answer” – increased hiring is necessary but not sufficient.

    Examiners need enough time and training to do a quality job examining each application, and to examine them at about the same rate that they’re being filed. If that unavoidably costs more than last year’s fees will cover, the fees need to be raised – and spent wisely. The ideal end result would be to make the entire patent system more worthwhile, resulting in increased filings and increased wages for those desperately poor US prosecutors.

  47. 36

    in-house: Mooney: Are you advocating that I should have settled in order to avoid invalidating a known-to-be-invalid patent?

    I did not know your imaginary patent was “known to be invalid” so, no, I wasn’t advocating that. But quite obviously you should have settled.

    Noise: how much hiring has already been done in the era that Malcolm likes to proclaim as the biggest waste in patent history –

    That’s an interesting question. Compare the number of PTO employees over the last twenty years with the number of filings.

  48. 35

    “The budget sounds great. If anything, more money should be given to the PTO to do more hiring. When the PTO does a better job of Examining applications and starts issuing less junck, the patents that do issue will be the better for it”

    More noise.

    Increased hiring is not the answer – how much hiring has already been done in the era that Malcolm likes to proclaim as the biggest waste in patent history – but now wants to throw more money at the problem and hike fees for the applicants.

    There are fundamental problems that need to be fixed in the patent process. I’d rather see the true problems get fixed before more examiners get out either of the two rubber stamps and goto town.

  49. 34

    @ Mooney: Are you advocating that I should have settled in order to avoid invalidating a known-to-be-invalid patent?

  50. 33

    IANAE, are you a US prosecutor? There is a cutthroat bidding w-a-r going on out here!

  51. 32

    IANAE, do you work as a US prosecutor? There is a cutthroat bidding war going on out here!

  52. 31

    >>win-win

    Don’t be ridiculous. Corporate budgets take time. This will hurt in the short term. In the long term, the effect will depend on how well the money is spent.

  53. 30

    I haven’t raised my fees in two years! In fact, I’ve reduced some during this same period.

    Sounds like you could benefit from quicker examination. You’ll get to bill that first office action response sooner.

    You just pass on the increased cost of PTO fees to your clients anyway, so this is win-win for you.

  54. 29

    “But you’re not charging less to draft and file a single application, are you?”

    yes, I am

  55. 28

    “Because filing a patent isn’t already prohibitively expensive for a lot of inventors during a recession.

    If it is, it’s not because of the patent office fees. It’s because of the attorney fees, but good luck getting them to take a 15% pay cut.”

    Oh yea? I haven’t raised my fees in two years! In fact, I’ve reduced some during this same period.

  56. 27

    @ IANAE. Two responses for you:

    Yeah, thanks. I’ve already discussed the IDS issue to death in another thread.

    Many of us have taken a 15% (or larger) pay cut the past year or two.

    But you’re not charging less to draft and file a single application, are you? The pay cut is because fewer people want to engage your services at the going rate.

    The proposal is to increase PTO fees so the PTO can pay more people to do more examining. As long as that’s where the money goes, and people get better patents quicker, what’s the problem with it? Other than fatalist who would rather have term extension than get VC funding and be first to market.

  57. 26

    IANAE said:

    “It’s because of the attorney fees, but good luck getting them to take a 15% pay cut.”

    Many of us have taken a 15% (or larger) pay cut the past year or two.

  58. 25

    in-house I decided that of the 1500 references I found in my exhaustive search, only 30 would be reasonably related to the claimed invention in the eyes of a reasonable Examiner. Thank goodness the patent is now granted. During the resulting litigation, however, the court determined that the 31st reference was actually relevant and becuase I decided not to file it in an IDS, the patent was held invalid for I.C.

    What’s really sad is you probably could have gotten a decent settlement. Did you testify in this case? Did you cry on the stand? I hope you did because I bet you’d be really convincing.

    Anybody else have some stories to tell? I always enjoy reading them, especially the ones that are obviously fake.

  59. 24

    ******ahem* “the increased funding will alllow the PTO to “reinstate overtime […]””*****

    What’s the need? Apparently, Examiner’s have plenty of spare time already. I mean, what with all the Examiners posting here during work hours. Why is there backlog again?

    Massive pay increases would be better. Pay increases and extensive personnel change FTW.

  60. 23

    What I am seeing locally is government employees getting raises and few other people getting raises.

    I think this is something to note because as I remember it, it used to be that the public sector suffered with the middle class. Now the governement takes theirs like the financial industry. It is, frankly, shocking to me that government employees are getting 5% raises when most people are getting less or the same amount of money. I don’t think this was the case back in the 1980’s.

  61. 22

    @ IANAE. Two responses for you:

    I am having a tough time getting this patent applicaiton allowed despite its picture claims. The examiner just sent me an Office Action saying that I submitted too many references in my IDS (from my exhaustive search no doubt); OR

    I decided that of the 1500 references I found in my exhaustive search, only 30 would be reasonably related to the claimed invention in the eyes of a reasonable Examiner. Thank goodness the patent is now granted. During the resulting litigation, however, the court determined that the 31st reference was actually relevant and becuase I decided not to file it in an IDS, the patent was held invalid for I.C.

  62. 21

    Just goes to show you how unempowered citizens are now.

    What’s the problem? The entire process is optional. It’s not like you have a constitutional right to a patent…

  63. 20

    Why not give a 15% across the board raise to alll governement employees too.

    *ahem* “the increased funding will alllow the PTO to “reinstate overtime […]””

  64. 19

    Just shameful the way the government is taking because they can. Just goes to show you how unempowered citizens are now. We can’t fight the corporations or the government.

  65. 18

    Seems like the government is taking theirs and all the people that aren’t working for the government have to do with much less. Why not give a 15% across the board raise to alll governement employees too. Why they work so hard. I heard that once a government employee had to work past 5:03 p.m.

  66. 17

    For absolute validity? And enforceability? All that would be left would be scope?

    How can you warrant validity of a patent before determining its scope? Seems to me that’s asking for trouble.

  67. 15

    In-house,

    It’s both the PTO and the courts, and the parties involved, that invest the patent with value.

    Your point about the 2nd ANDA filers is well taken.

    I wasn’t contemplating a patent that a court wouldn’t hold invalid for any reason, just one that would only be reviewed for, say clear error.

    For absolute validity? And enforceability? All that would be left would be scope? Sure, $50k.

  68. 14

    The problem is that the PTO is not the body that provides the “value” to the patent. It is the courts.

    To be specific. Settlement negotiation with 2nd ANDA filiers is much different after the court upholds the validity of the Orange-Book listed patent.

    A fair point. Another fair point is that a 15% increase in PTO fees is a drop in the bucket for 2nd ANDA filers.

    The budget sounds great. If anything, more money should be given to the PTO to do more hiring. When the PTO does a better job of Examining applications and starts issuing less junck, the patents that do issue will be the better for it. Every patent owner benefits from that.

  69. 13

    fatalist: You are clueless

    Considering the source, I’m going to take that as a compliment.

    I would pay up to $50K or even $75K per app if you could give me a meaningful warranty that the issued patent will not be held by a court to be invalid for any reason (prior art or i.e.).

    If you pay a good firm that much money to do an exhaustive prior art search and claim your invention around all the art they find, you should for all intents and purposes be safe from art-based invalidity challenges down the road. Particularly if you repeat the search 18 months later, for which you would probably have ample funding.

  70. 12

    “Who says you need a patent attorney!? Why not really reduce your costs and draft the application yourself!”

    Says the in-house guy. LOL.

    I’d rather face a poorly drafted patent than a good one too. LOL.

  71. 11

    Reincarnation of IBP – I would pay up to $50K or even $75K per app if you could give me a meaningful warranty that the issued patent will not be held by a court to be invalid for any reason (prior art or i.e.).

    The problem is that the PTO is not the body that provides the “value” to the patent. It is the courts.

    To be specific. Settlement negotiation with 2nd ANDA filiers is much different after the court upholds the validity of the Orange-Book listed patent.

  72. 10

    “A 15% fee increase would be fine with me, if it had a real effect on pendency and backlog, which is probably a bigger issue for independent inventors”

    You are clueless

    pendency and backlogs are annoying, no doubt, but can be extremely beneficial for patent term calculation
    E.g mine was extended by more than 3 years bacause it took PTO 4 years to issue first OA

    The real issue for independent inventors is getting paid at the end for their efforts
    It’s the issue of patent enforcement

  73. 9

    Costs are not necessarily the issue.

    Unless an applicant actually doesn’t have the money, the issue is one of value.

    Given the average quality of a PTO examination and the time it takes the PTO to do it, considering the evidentiary thresholds involved and the quality of the record developed, what SHOULD the PTO charge for the examination of an “average” utility application that had a time to FOAM of 3 years? 1 year? 6 months?

    I mean the TOTAL COST from initial submission to issuance, not the “itemized” list the PTO gives.

    Based on applications I’ve prosecuted, I’d say that a 3-year app would be worth about $500. The examination, search, etc. is maybe worth $300, the publishing and recordation maybe $200.

    For a 1-year app, the same as above.

    For a 6-month app, the same as above. 6 months to a FOAM should be the outside limit. 6 MONTHS!

    For 3 months, I’d say about $1000–$300 exam/search, $200 recordation/publishing, $500 premium over 6-month app.. Why the premium? I don’t exactly know–maybe the cost to jump ahead of the queue of 6-months apps..

    WHAT WOULD PEOPLE PAY FOR A REALLY GOOD EXAM, REALLY GOOD RECORD, WITH 4 YRS MAX TO ISSUE?

    2 YRS?

    1 YR?

    6 MOS?

    I personally would pay maybe $25,000.

    How about having a system where the applicant specifies the sum available to spend on search/exam, and the PTO searches and examines until such time as they have found really good art and make a good rejection, within the budget envelope?

    If the applicant specifies $10,000, but the art is found using only $2,000 in time and the app is therefore abandoned, then the $8000 remaining would be refunded to the applicant.

  74. 7

    Mooney is also looking for work to supplement the “substantial fraction” of zero clients, you know, all the ones that refuse to send him work.

  75. 6

    Who says you need a patent attorney!? Why not really reduce your costs and draft the application yourself!

  76. 5

    Because filing a patent isn’t already prohibitively expensive for a lot of inventors during a recession.

    As noted above, the fees for filing a provisional and a utility app are really quite low if you do it right, particularly if the invention is not a biotech or chem app requiring special services (e.g., sequence listings).

    If the attorney fees are too high, then you may need to find a new attorney or agent. There are a lot of them out there, looking for work. Spread it around.

  77. 4

    Compared to the lawyer fees aren’t the patent fees relatively cheap? The last time I checked the fee for filing a utility application is $550 for a small entity but the cost of preparation of the application by the lawyer is about $5,000-$15,000.

  78. 3

    Because filing a patent isn’t already prohibitively expensive for a lot of inventors during a recession.

    If it is, it’s not because of the patent office fees. It’s because of the attorney fees, but good luck getting them to take a 15% pay cut.

    A 15% fee increase would be fine with me, if it had a real effect on pendency and backlog, which is probably a bigger issue for independent inventors. Problem is, even in the best case it’ll be a long while before we see any results on that front.

  79. 2

    15% increase, huh? Because filing a patent isn’t already prohibitively expensive for a lot of inventors during a recession.

  80. 1

    “•USPTO would also be given authority for FY2011 to increase fees beyond the 15% at its discretion.”

    Just say no kids.

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