Wednesday 1 October 2014

More Resources to the U.S. Patent and Trademark Office--Require Maintenance Fees for Design Patents

The U.S. Patent and Trademark Office (PTO) has been criticized for some time for issuing relatively poor quality patents.  Indeed, some may argue that the patent troll problem is an issue because of poor quality patents.  For some technical areas, the PTO has struggled with obtaining relevant prior art; however, there is also a question of adequate resources available to the PTO to hire and train more examiners.  While the PTO has hired many new examiners in the last five to ten years and has opened a couple of new offices, I believe the PTO could use more resources.  One source of additional resources for the PTO includes maintenance fees. 

The PTO requires that maintenance fees are paid for utility patents during the life of the patent.  If the fees are not paid, the patent may fall into the public domain.  Basically, maintenance fees without a surcharge must be paid:

  • Three to three and a half years after the date of issue for the first payment;

  • Seven to seven and a half years after the date of issue for the second payment; and

  • 11 to 11 ½ years after the date of issue for the third and final payment.

  • Not only do maintenance fees provide additional resources for the PTO, they also provide the benefit of allowing some patented inventions to lapse into the public domain available for all to use.  Notably, Professor Crouch states that 50% of all granted utility patents fall into the public domain because of a failure to pay maintenance fees.  Interestingly, two types of patents do not require maintenance fees: design patents and plant patents.  37 C.F.R. section 1.362 provides: "(b) Maintenance fees are not required for any plant patents or for any design patents." 

    In a recent article by Sarah S. Brooks and Salil Bali titled, "Design Patents--Taking a Closer Look at These Valuable Assets," published in the New Matter magazine in Fall 2014, the authors point to the increase in acquisition and litigation of design patents as well as the benefit of obtaining, "the total profits of the infringer [of a design patent] rather than the reasonable royalty or lost profits for a utility patent infringement."  Notably, the authors state that the number of design patents applications filed in 2006 were 25,853 and have steadily increased every year (except 2009) to 35,077 in 2013.  The number of design patents granted has increased from 19,072 in 2006 a year to 22,453 in 2013.  The number of design patents applied for and granted does pale in comparison to utility patents.  The number of utility patent applications applied for and granted in 2013 was 563,853 and 265,979, respectively. 

    The recognition of the importance and value of design patents may explain the increase in filings.  While design patents are only available for 14 years, a scheme similar to the one for utility patents could be created for design patents.  That could result in additional revenue for the PTO.  Moreover, a maintenance fee scheme for design patents would have the potential benefit of having some designs fall into the public domain.  What do you think?

    No comments: