WEB PATENT NEWS - May, 2004
by Robert M. Hunter, Registered Patent Agent
News about patents, licensing and seed capital sources for inventors and innovating organizations.
I. ALERT: INCREASE IN PATENT FEES COMING SOON - If you are planning to file a U.S. patent application this year, you can save a lot of money by filing it before a new fee schedule becomes effective.
II. COMPLAINTS AGAINST INVENTION PROMOTERS AVAILABLE FOR VIEWING - You can now read complaints of inventors who feel they have been ripped off by particular invention promotion firms.
III. WHEREBY AND THEREBY CLAUSES IN PATENT CLAIMS - Learn how to interpret "whereby" and "thereby" clauses in patent claims.
I. ALERT: INCREASE IN PATENT FEES COMING SOON
The U.S. House of Representatives has passed H.R. 1561, the United States Patent and Trademark Fee Modernization Act of 2004, which calls for a significant increase in patent fees. A companion bill, S. 1760, which more closely reflects the original USPTO proposal, is pending in the U.S. Senate. The "modernization" fee schedule in a compromise bill is expected to replace the USPTO fee schedule that will become effective on October 1, 2004.
Savings in fees that can be achieved by a small entity (independent inventor, small business or university) by filing before the increased fees are implemented can be illustrated by comparing two examples: a simple utility patent application and a complex utility patent application. Under H.R. 1561, large entity fees (and savings) would be twice those calculated in the examples. For the purposes of this analysis, the simple regular patent application is assumed to contain a specification and drawings that do not exceed 100 sheets of paper, 3 independent claims and 20 total claims. The complex regular patent application is assumed to contain 150 sheets of paper, 15 independent claims and 80 total claims. In my July, 2002 newsletter, I explained why it is prudent to include more claims of varying scope in patent applications filed since the Festo case was decided by the U.S. Supreme Court.
For the simple, regular application, a basic filing fee of $385 would be charged currently. Under the "modernization" fee schedule, under H.R. 1561, separate small entity fees would be charged for filing ($150), searching ($250) and examination ($100), totaling $500. Under S. 1760 (and the USPTO proposal), the small entity search fee would not be reduced by 50 percent (as other patent fees are now), so the total cost would be $750, almost doubling the cost to a small entity. The USPTO 21st Strategic Plan calls for the search fee and/or the examination fees to be refunded, if the application is abandoned before those tasks were begun by the USPTO.
For the complex, regular patent application, a basic filing fee, excess claims fees (over 3 independent claims and 20 total claims) and a new fee for additional sheets ($250 for each 50 sheets over 100) will be charged. Small entity excess claims fees will increase from $43 to $100 for each independent claim over 3 and from $9 to $25 for each claim over 20 total claims. These increases will significantly increase the cost of filing a complex patent application. Total filing fees for a complex regular patent application under the current fee schedule would be ($385 + $43 x 12 + $9 x 60) = $1,441. Under the "modernization" fee schedule, total "up-front" fees for the complex regular application would be ($500 or $750 + $100 x 12 + $25 x 60 + $125 x 1) = $3,325 or $3,575, a 131 percent or 148 percent increase over current fee levels.
As this analysis reveals, significant savings can be achieved by filing your patent application before the proposed fee increases become effective. The effective date of the Act could be as early as the date the Act is enacted, but implementation of a new fee schedule requires at least a 30 day notice to the public.
Some good news is that the Administration's Fiscal Year 2005 budget (which starts on October 1, 2004) calls for ending the practice of diverting USPTO fee income into the general fund. (More than $700 million in USPTO fee income collected from inventors has been diverted from USPTO into the general fund over the past 11 fiscal years.) To make sure this happens, H.R. 1561, but not S. 1760, calls for a Patent and Trademark Fee Reserve Fund to be created in which fees collected in excess of the amount appropriated for the USPTO for each fiscal year would be deposited. The excess funds would be refunded to patent and trademark applicants.
In a controversial move, the USPTO 21st Strategic Plan calls for outsourcing of the pre-examination search function of the USPTO. Interestingly, H.R. 1561, but not S. 1760, requires that searches outsourced to commercial entities by the USPTO be outsourced only either to U.S. citizens or to businesses that employ U.S. citizens to perform the searches.
Everyone agrees that the USPTO is an organization in crisis. A recent USPTO press release stated that "without the new fees, full implementation of the [strategic] plan is not possible, average pendency will increase to more than four years, and the backlog of unexamined cases will more than double to 1,000,000 patent applications." A real question remains, however, about whether these fee increases will deny access to small entities to the U.S. patent system. In order to answer this question, H.R. 1561, but not S. 1760, also requires the Office of Advocacy of the Small Business Administration to study the effect of the increased fees on the ability of small entities to file patent applications.
If you agree with the provisions added to the House version of the bill, I encourage you to contact Congress (Senate and House) and make sure your opinions are heard.
II. COMPLAINTS AGAINST INVENTION PROMOTERS AVAILABLE FOR VIEWING
The American Inventors Protection Act of 1999 required the USPTO to provide a public forum for the publication of complaints concerning invention promoters/promotion firms. The USPTO was also required to publish responses from the invention promoters/promotion firms to the complaints. You can read them on the USPTO website.
III. WHEREBY AND THEREBY CLAUSES IN PATENT CLAIMS
A patent claim is a description of the elements of a product or the steps of a method and their interrelationships. It is a recitation of the physical structure of a machine, article of manufacture or composition of matter, or a recitation of the steps by which a process is performed. A patent claim is not a marketing claim, that is, a patent claim is not an assertion that the product or method has certain advantages or benefits.
It is possible, however, to use a "whereby" or "thereby" clause to describe a function, operation or result that necessarily follows from the structure or method previously recited in a patent claim. Over the years, court decisions have established that a "whereby" or "thereby" clause adds nothing to the patentability of a claim if is expresses only such a necessary result. So, the "whereby" in a properly drafted whereby clause has come to mean "it follows from the foregoing that. . . ."
Use of a "whereby" or "thereby" clause is appropriate when it helps the reader understand the how the elements of the fit together and function as complete structure, sums the invention up or makes the claim more readable. A claim of the same scope can sometimes be obtained using the "means for" approach (using means plus function limitations), but recent court decisions have limited the scope of such claims as described in my October, 2002 newsletter.
Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114