Issue 52 | February 24, 2003
Update: USPTO Strategic Plan and Fee Proposal
 On July 25, 2002, members of the APLF presented an Internet roundtable on the "USPTO Strategic Plan And Fee Proposal" that was submitted to Congress on June 3, 2002. On February 3, 2003, the USPTO issued an updated plan based upon feedback that it received from various constituency groups. Highlights of the latest strategic plan include
  • Contracting with private sector commercial search organizations in lieu of the proposed requirement for applicant-commissioned search reports.
  • Implementing an administrative alternative to deferred examination that does not require legislation.
  • Delivering an operational system for electronically processing patent applications by October 1, 2004, including electronic image capturing of all incoming and outgoing documents
  • Recommending legislative changes to implement PCT-style restriction practice before the end of the 108th Congress.
  • Continuing to rely on voluntary submissions of Information Disclosure Statements.
  • Achieving first action pendency of 14.7 months in fiscal year 2008.
  • Achieving overall patent pendency of 27 months in fiscal year 2008.
  • Admitting that it will take at least a decade to achieve the long-term optimum goal of 18 month pendency.
  • Seeking post-grant review legislation and exploring the need for third-party requested reexamination.
  • Evaluating the desirability of judicial review of USPTO decisions by forums other than the Federal Circuit.
  • Reducing the total patent examiner hires through fiscal year 2008 by 2400 compared to the 2003 Business Plan
  • Implementing pre-employment testing and periodic certification for patent examiners.
  • Conducting elaborate testing and evaluation of the plan's concepts, particularly in the areas of outsourcing, quality enhancements, and e-Government.
  • Seeking legislation to to restructure the USPTO fee schedule before mid-fiscal year 2003 by
    • Substituting the original proposal with a linear fee system that charges for excessive claims and pages of complex specifications in proportion to the increased processing costs.
    • Establishing a single patent filing, search, and examination fee with a provision for partial refund.
    • Eliminating surcharges for filing continuations and patentably indistinct claims.
    • Eliminating the separate fee to trigger examination.
    • Eliminating authority for the Director to reduce examination fees for micro-entities.
    • Replacing trademark fee adjustments in excess of the Consumer Price Index with three filing fee amounts.
The proposed Fee Modernization Act of 2003 is available on the Internet along with a summary, section-by-section analysis, and fee proposal comparison chart. On a final note, in the words of the USPTO, "The Strategic Plan remains a work in progress that will be refined and updated periodically to adjust to changing conditions and to incorporate the best thinking of the entire intellectual property community."

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.