Promote the Progress

Remember the Patent and Trademark Fee Modernization Act of 2004? PTFMA (H.R. 1561) was an anti-fee diversion bill that Congress ultimately rolled into the Consolidated Appropriations Act (CAA), which President Bush signed into law on December 8, 2004 (remember the maintenance fee nightmare scenario?). The CAA ushered in significantly higher patent fees and left meaningful, long-term diversion protection on the cutting room floor.

Now that tasty little sausage is back. How could that be? Easy - the patent fee provisions of the CAA are temporary - they only apply to fiscal years 2005 and 2006, which ends on September 30th. As a result, the legislation that divided application filing fees into separate filing, search and examination fees, breaking the $1000 barrier in the process (for non-small entities), will soon expire.

So what does all of that mean? Practically speaking, it forces the Patent and Trademark Office to issue a proposed fee change [.pdf] for fiscal year 2007 that includes two options - one that will take effect if the changes made by the CAA are extended, and one that will take effect if they aren't.

The second option would send the utility application fee back under the $1000 barrier because the statutory authority for separate search and examination fees will disappear if Congress doesn't extend the new, CAA-based scheme. Under this scenario, the fee provisions of the Patent Act will revert back to the single filing fee scheme that existed prior to enactment of the CAA. The Office's hands would be tied and only an inflationary adjustment to the pre-CAA filing fee could be implemented.

Confused yet? Don't worry...Congress is set to clarify everything as it considers current anti-fee diversion legislation and the 2007 budget. Think you'll see a reduction in filing fees out of this mess? I wouldn't bet on it.

Posted by J Matthew Buchanan at 11:49 AM | Permalink

Earlier this month, the House Judiciary Committee officially placed Patent and Trademark Office fees on the calendar by recommending passage of the Patent and Trademark Fee Modernization Act of 2005 (H.R. 2791) (PTFMA) without amendment.

While the future of the PTFMA is not clear, we know that PTO funding and fees must be debated at some point this year because the provisions of the Consolidated Appropriations Act of 2005 (H.R. 4818) expire at the end of fiscal year 2006 (September 30, 2006).

Fees and funding, of course, seem to necessarily lead to debate of the fee diversion issue (in fact, the PTFMA includes anti-fee diversion provisions).  That said, it seems that now would be an appropriate time to write your Representative and express your beliefs about the diversion issue.  As you're penning your letter, consider the following:

1.  Despite the bitter disagreement on several patent reform issues, most PTO stakeholders strongly oppose the concept of fee diversion and support a permanent legislative fix to the problem (H.R. 4818 provides a temporary fix).

2.  At least one influential person believes that innovation is important to our future as a leader of the global economy.  Will our system for protecting innovation be up to the challenge if fee diversion continues?

Feel like writing?  Find your Representative here.

Posted by J Matthew Buchanan at 10:35 AM | Permalink

Last week, the House Judiciary Committee released its report on the Patent and Trademark Fee Modernization Act of 2005 (H.R. 2791) (PTFMA). The Committee reports that it has considered the bill and that it recommends its passage without amendment.

You can view and/or download a copy of the report here.

The PTFMA was introduced on the same day as the Patent Act of 2005 (H.R. 2795) and is one of two completely different strategies to ending PTO fee diversion that are currently pending in Congress. The PTFMA includes the controversial anti-fee diversion provisions that were excised from the major PTO fee bill from the 108th Congress, H.R. 1561, on the eve of its passage by way of absorption into the omnibus appropriations bill. Just like H.R. 1561, the PTFMA sets up a refund system to avoid fee diversion while the other strategy - embodied in the COMPETE Act (S. 1020), which currently sits idle in the Senate Committee on Finance - avoids fee diversion using a fee reduction system.

With the release of the report from the House Judiciary Committee, the PTFMA continues to enjoy an early lead, likely because H.R. 1561 enjoyed such broad support amongst PTO stakeholders.

A debate on PTO funding - and fee diversion - may be held soon if the PTFMA makes it onto the floor calendar.

You can view the PTP archives relating to the PTFMA here.

You can view the PTP archives relating to the COMPETE Act here.

Posted by J Matthew Buchanan at 11:43 AM | Permalink

The House Subcommittee on the Judiciary has scheduled a markup hearing for H.R. 2791, the Patent and Trademark Fee Modernization Act of 2005 (PTFMA), for Wednesday, November 9, 2005.
PTFMA was introduced on the same day as the Patent Act of 2005 and includes the controversial anti-fee diversion provisions that were excised from last year’s major PTO bill, H.R. 1561, on the eve of its passage by way of absorption into the omnibus appropriations bill.
Earlier this year, the Subcommittee on Courts, the Internet, and Intellectual Property held a markup hearing on PTFMA.  No amendments were made to the bill during that hearing.
Currently, two completely different approaches to addressing the diversion of fees from the Patent and Trademark Office are sitting in Congress.  PTFMA includes a complex administrative refund system while the COMPETE Act (S. 1020), which sits idle in the Senate, avoids fee diversion through a fee reduction system. By entering full committee markup, PTFMA maintains its early lead, likely due to the broad support expressed for H.R. 1561 in the last Congress.
You can download both PTFMA and the COMPETE Act in the PTP Patent Reform Library.

Posted by J Matthew Buchanan at 07:15 AM | Permalink

Yesterday, the House Subcommittee on Courts, the Internet, and Intellectual Property referred H.R. 2791, The Patent and Trademark Fee Modernization Act (PTFMA) of 2005, to the full Committee on the Judiciary.

No amendments were made during markup by the subcommittee.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress.]

 

Posted by J Matthew Buchanan at 10:48 AM | Permalink

The House Subcommittee on Courts, the Internet, and Intellectual Property held a markup hearing on the Patent and Trademark Fee Modernization Act (PTFMA – H.R. 2791) today.  The bill has been referred to the whole Committee on the Judiciary for consideration.

I’m working to determine if any amendments were offered in the markup.

Remember, PTFMA was introduced on the same day as the Patent Act of 2005 and includes the controversial anti-fee diversion provisions that were excised from last year’s major PTO bill, H.R. 1561, on the eve of its passage by way of absorption into the omnibus appropriations bill.

Currently, two completely different approaches to ending fee diversion are sitting in Congress. PTFMA sets up a refund system to avoid fee diversion.  In contrast, the COMPETE Act (S. 1020), which sits idle in the Senate, avoids fee diversion using a fee reduction system.  With today’s markup and referral to the full Committee, PTFMA enjoys an early lead, likely because H.R. 1561 enjoyed such broad support in the last Congress.

You can download both PTFMA and the COMPETE Act in the PTP Patent Reform Library.

Posted by J Matthew Buchanan at 11:47 AM | Permalink

The much anticipated Patent Act of 2005 was finally introduced last week.  Another patent bill, indeed another patent reform bill, was also introduced last week.  The Patent and Trademark Fee Modernization Act (PTFMA) of 2005 (HR 2791) was introduced on the same day as the Patent Act of 2005 (HR 2795).

View and/or download a .pdf of HR 2791 here.

PTFMA 2005 is, in essence, PTFMA 2004 (HR 1561), which was gutted of its anti-fee diversion language and rolled into the ombnibus appropriations bill last year.  PTFMA 2005 includes the anti-fee diversion language and repeals the fee provisions of the omnibus bill.  Similar to HR 1561, the new bill sets up a reserve fund for PTO fee collections that exceed appropriated amounts and allows the director to issue refunds to those who paid fees to the Office during the year.

Representatives Smith and Berman are both listed as sponsors of HR 2791.

Adequacy of PTO funding levels is viewed by all involved in the patent reform movement as critical to the success of any reforms that are eventually enacted.  Its not likely to be a coincindence that HR 2791 was introduced on the same day as HR 2795.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 07:11 AM | Permalink