How the AIA requires the USPTO to be a patent system arms dealer

devil-angel-good-evilIn a comment on a recent article, an anonymous individual claiming 10 years of patent prosecution experience lamented the transformation of the U.S. patent system into a Byzantine system that appears to have the goal of denying the benefits of having a patent. “It now looks like a bait-and-switch system,” the commenter known as Ternary wrote. “You will get a patent, which will be taken away in post-issuance procedures, preferably at the moment when you want to obtain its legal benefits as a rightful owner.”

I frequently hear that same sentiment from inventors, small businesses, and patent attorneys. I am even starting to hear it from large corporations that find themselves caught in the snare of the Patent Trial and Appeal Board (PTAB).

Many may be tempted to write off this sentiment as nothing more than emotional ranting, but that would be a mistake. The sentiment runs deep, even shared by some in the industry with intimate familiarity with the looming USPTO budget crisis. So, while frustration can explain some of the underlying anxiety, there is also a factual basis for these feelings too.



Maintenance Fees

A substantial portion of the fees collected by the Patent Office comes from maintenance fee payments. For example, in FY 2011, the USPTO collected $819.3 million in maintenance fees while only collecting $1,035.8 million related to work actually performed for fees collected during FY 2011. Professor Dennis Crouch has called maintenance fees “easy money for the USPTO because the Office has already done the work of examination.”

With that amount of revenue at stake the Patent Office has a conflict of interest if not an outright ethical dilemma. The Office bemoans bad patents, but if they do not issue patents they do not receive issue fees and they cannot charge maintenance fees. To put this in perspective, issue fees are presently $960 per patent for a large entity, and maintenance fees for a large entity presently range from $1,600 for the first payment, to $3,600 for the second payment, and ultimately cap out at $7,400. These fees are in addition to the fees due at the time of filing an application, the extension of time fees if you need more time to respond to an examiner, the inevitable fees for the virtually certain filing multiple requests for continued examination, and in some technology areas the very real possibility that you will only get a patent by winning on appeal.


Budgetary Crisis

The Patent Office finds itself caught between the proverbial rock and a hard place. With so much of the Office’s funding coming from maintenance fees the agency’s budget depends upon patent owners applying for, receiving and then paying to keep the patents they receive. In recent years, however, thanks in large part to the dismal record for patent owners in inter partes review (IPR) proceedings and an increasingly hostile Supreme Court, less is being maintained because the stakeholder community views patents as harder to enforce and, therefore, not as valuable. The USPTO budget is far from secure.

On top of this budgetary uncertainty created by a decrease in applications and a decrease in maintenance fees, during the August 20, 2015, Patent Public Advisory Committee (PPAC) meeting, USPTO Director Michelle Lee announced a shared services initiative. Under this shared services initiative agencies falling under the Department of Commerce will utilize shared services for human resources, information technology and procurement functions. The fear is that with the USPTO being funded by user fees it will be required to pay for the IT and other needs of other Commerce agencies using funds that are supposed to be used only for the operation of the USPTO. See AIPLA letter to Secretary Pritzker and Under Secretary Lee.

At a time of decreased revenue, a shared services initiative threatens to even further deplete USPTO coffers and become the new face of fee diversion.


PTO as Arms Dealer

Applying for and receiving a patent costs money – a lot of money for an applicant. But that is only half the story. Like an arms dealer, the USPTO does not only sell to one side of the patent battlefield. The USPTO sells to both sides, offering those threatened by a patent the ability to invalidate claims to patents in a variety of different procedural offerings.

For example, if you want to challenge on the cheap you can use ex parte reexamination, which for a large entity will only cost you $12,000 to file. Of course, if you want to challenge more than three independent claims or a total of twenty total claims there will be more fees. See Post Issuance Fees.

If you want to avail yourself of the new administrative trials created by the America Invents Act (AIA), a large entity can request institution of an inter partes review (IPR) for up to 20 claims for $9,000, but there will be a post-institution fee of $14,000 for up to 15 claims instituted. In both situations there are the inevitable extra claim fees. But it gets really expensive if you want to file a covered business method (CBM) challenge. The CBM petition fee for a large entity is $12,000 for up to 20 claims, and the post-institution fee is $18,000 for up to 15 claims instituted. Again, in both situations there are the inevitable extra claim fees. See PTAB Fees.

Not only does the Patent Office handsomely charge for the acquisition and maintenance of a patent, they also handsomely charges for the right to challenge those patents after issue. On its face this creates a perverted incentive to actually issue low quality, bad patents.



Is the Patent Office Honest?

Do I think the Patent Office is intentionally manipulating the system so they can charge fees? No, absolutely not. But there are many openly talking about how much the USPTO charges patent applicants and patentees, and then also noticing how much the USPTO charges challengers. The arms dealer nature of how the AIA has transformed the Patent Office is not lost on many within the industry. Add in the insecurity of the USPTO budget and the fact that the Patent Trial and Appeal board (PTAB) directly reports to the Director, thereby not enjoying any true judicial autonomy (at least on paper) and you would be hard pressed to have come up with a more conflicted structure or system.

Many in the stakeholder community have lost faith in the patent system. There is a growing sentiment that the patent system will only pull the rug out from inventors in the end. Perhaps this is why for the better part of a century the Patent Office steadfastly refused to publicly comment on even the possibility that a patent could be invalid. [1] In retrospect the Patent Office not commenting on even the possibility that a patent could be invalid looks like an extremely wise policy and one that should be readopted.

For the patent system to work the Patent Office must be perceived to be an honest broker that is completely agnostic. Now I am not suggesting that anyone at the Patent Office is dishonest, but optics are funny things and no doubt why lawyer ethics are so concerned with the appearance impropriety. Perception can and does become reality, as is happening right now with respect to the patent system.



If you deserve a patent you get a patent, period. That must be how the Patent Office acts, but more importantly it must be the perception of the public. And for goodness sake, the entity handing out the patents cannot be viewed as anti-patent or in favor of getting rid of patents, even bad patents. A Patent Office constantly talking about how many bad patents they have issued and low quality in desperate need of improvement does nothing to inspire confidence in the next generation of innovators and does real long-term damage to the system.


[1] See Staying Litigation Pending Reexamination of Patents at pg 283, citing United States v. General Electric Co., 183 U.S.P.Q. 551, 552 (Comm’r Pat. 1974) in which the Commissioner of Patents and Trademarks reaffirmed the Office policy of refraining from commenting on possible invalidity of a patent.



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

35 comments so far.

  • [Avatar for Stephan Curry]
    Stephan Curry
    April 8, 2016 08:11 am

    the below comment fails to realize that the first to invent system can be good for the sole inventor who can’t get venture funding but can get sales from his/her little invention, among other advantages of this abolished system. harmonization is Not a blanket “all good” and we did previously have aspects in our American patent system that was good for domestic applicants and so we did not have to copy the foreign patent systems.

    comment from Managing IP:
    “In the AIA we made a lot of good progress, we harmonised with the rest of the world going from first to invent to a first to file system…”

  • [Avatar for PAUL MORGAN]
    March 31, 2016 05:33 pm

    Just on the subject of the maintenance fees, payable in the years after the patent issues, note that this enables the very low filing and other application fees the U.S. has as compared to many other countries, including the big cost breaks for small entities and individual inventors.
    The first, 3.5 year, maintenance fee is especially small, giving inventors up to 7.5 years after they get their patent to try to license it before the next, and larger, maintenance fee.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 30, 2016 10:20 pm

    Hey Gene,
    You should keep track of metrics on the page visits in your article (see Metrics discussion above). My gut feeling is the Metrics are very high.

    If I were a betting person, I would bet you that the page views of your articles from the Top Dogs in the USPTO are very high. But only Lord Jesus would know that and He would say yes it is. But you are an electrical engineer and are probably Tau Beta Pi or Eta Kappa Nu (I am guessing those are the frats for EEs, but I don’t know for sure since I am not an EE) and are not the typical EE-wannabe Larry or bob off the street, so you can figure out all these metrics to see how popular your website is. It gives me high hopes that the law clerks of Clarence Thomas will read this website and set the dude on a straight path God Willing. Amen!! Shalom!!

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 30, 2016 01:42 am

    angry dude@30

    right on, sir angry dude

    question for you or any valley veterans or insiders.
    Who are the persons blamed by Larry Page for costing him an extra 8 Billion dollars or so for these messed up patent auction activities?

    where are these persons now?
    are they still at Google?
    let us hope that these persons don’t try to eradicate the US patent system if they are holding some inner anger about screwing it all up.

  • [Avatar for angry dude]
    angry dude
    March 29, 2016 11:50 pm

    Stephan Curry@29

    One thing everyone should understand very clearly:

    Those big tech CEOs like Larry Page have friendly talks with each other all the time, at cocktail parties or they just chat on cell phones, despite their companies suing each other for zillions of dollars for patent infringement and anything else

    I propose an experiment: you write a letter to some of those big SV CEOs about some other big SV company infringing your patent and I can guarantee that the other CEO will know about it almost immediately, even if those companies are locked in protracted multi-year patent litigation between each other

    This is the sad reality we live in today

    De-facto monopoly, cartel, collusion – call it all you want

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 05:42 pm

    Thank you for providing the names on the pushers of the AIA trials, Gene.

    Thank you for noting the name google there among the pushers of the AIA trials. We can narrow the Culprits even more.

    yes, I agree with you that the Nortel patents was the purchase goal but as you know google would not pay $4.5 billion for the Nortel portfolio.

    Of course, we all realize Allen Lo will not admit in a published interview that buying the Motorola wireless portfolio had to be done for certain reasons (a panic purchase ) for $12.5 Billion or so.

    It makes us wonder, who was google’s patent strategist during this time, inside and outside google?? of course, Larry Page is the head honcho strategist. but it makes us wonder who were Larry’s advisors

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 29, 2016 04:27 pm

    Stephan Curry-

    Broadly speaking it was the infringer lobby that was pushing post grant administrative trials be included in the AIA. If memory serves me correct the company most in favor was Google, but virtually all the tech companies were on the same page (not Qualcomm, not IBM though, or others similarly situated). Pharma and biotech went along with the administrative trials because they couldn’t imagine that their patents would be challenged. In terms of the individuals who pushed this, Mark Lemley and Ed Reines were among the leading surrogates who pushed this issue. See:

    As for Google buying Motorola patents, it is pretty widely known that the Motorola portfolio was exceptionally weak. Motorola filled up on a lot of really bad patents, many that were directed to low tech gadgets like cell phone holders. Not that everyone didn’t do that, but the Motorola portfolio was certainly not a gem. Quite the opposite. The portfolio that Google needed to acquire was the Nortel portfolio, which was quite strong. They famously lost out on that portfolio and then way overbid for the Motorola portfolio.


  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 02:49 pm

    65 points, just to make a statement that the Splash Brothers are annoyed at those PTO DC Wiz leaders

  • [Avatar for Mr. V]
    Mr. V
    March 29, 2016 02:15 pm


    How many points are you gonna drop on the Wiz Kidz tonight fam?

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 01:01 pm

    Gene said:
    The reality of the situation almost becomes secondary at some point I’m afraid, but that is what you get when you have the Office embrace the “patent death squad” moniker.

    Hey Gene, my neighbor works with the Federal Government as an engineer in a sensitive energy/power area. Anyway, when he interviewed for that job, an FBI agent showed up at my house to interview me about my neighbor/friend, as they should.

    I would assume that if a person is nominated as Supreme Court Justice or US Attorney General, or even as USPTO Director, the FBI will question all and I mean all relevant persons or even minor persons so that the Senate can make sure the nominee is qualified and so that the nominee does not have the potential to think of the monikers that you said. What if some people important were not interviewed/questioned by the FBI? things would be Amok at the DOJ if the Attorney General Nominee did not tell the Senate Committee that his harvard law school prof has commie tendencies (hypothetical) or that maybe a past supervisor may say that the the AG Nominee may not be qualified as Attorney General (hypothetical).

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 12:46 pm

    Night Writer,
    I don’t disagree with you in what you said.
    All I am saying is that Allen Lo said Google had to spend $16 Billion dollars since they needed the Motorola wireless patents since google had a “skimpy patent portfolio” (google it, Allen Lo said that). And Allen Lo is filing 5,000 patent applications per year as a CYA and Allen talked Larry Page into it.

    Allen Lo also complained in published interviews that when he started at Google, the Google engineers were anti-patent (but Allen knows that attitudes of engineers are influenced and can be changed by the person in charge of the company’s patents).

    Night Writer, Are you with Fenwick? you are the first in this board to mention something very specific about the USPTO Director’s patent prosecution experience. Are you Dave?? Just Curious, man. Peace.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 12:37 pm

    Night Writer,
    Who is the person who advocated for implementing these PTAB administrative trial proceedings into the USPTO?
    Who is this wise guy or wise gal who is the culprit?
    It had to start with one person before the patent reformer momentum built up. Do we have the same person in mind?

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 12:34 pm

    At least in the EPO post-grant challenge proceedings, an Applicant can amend the claims. In the USPTO, the claims are just ruled invalid.

    The Supreme Court Justices should read this great article by Gene so that the Justices are well informed when they hear the Cuozzo case.
    Thank you Gene for being an advocate.

    We would like to know who is the culprit who advocated for implementing PTAB trials in the USPTO

  • [Avatar for Night Writer]
    Night Writer
    March 29, 2016 12:33 pm

    And I’ve worked for just about every corporation in Silicon Valley.

  • [Avatar for Night Writer]
    Night Writer
    March 29, 2016 12:32 pm

    Stephan Curry @15: it really does not mean much that Google is filing a lot of patents. They are a corporation with massive money. Of course, they are going to hedge their bets. 5,000 patents is nothing to Google bucks. Say, $30K per patent, then it is $150 million. A drop in the bucket when they have what $60 billion in the bank.

    Moreover, you know, another outcome of the great crippling of the patent system is that only those with lots of money can assert their patents. So, it may become just a sport of kings/queens. Google may use its money to stop start-ups from asserting their patents against Google, but Google may assert their patents against the start-ups. That is a very likely outcome. Google is hedging.

    But, my friend, the next giant leap in the toilet comes if the trade secret laws are passed.

  • [Avatar for aldo]
    March 29, 2016 12:21 pm

    thanks stephen – i have not walked in your shoes & respect your experience.

    my view comes in part from my experience having an invention taken by a large multi-national company. the federal court helped to restore some of the damage – google ‘x-it v kidde’ to read more.

    since this experience i have spent much time trying to understand the patent system from jefferson’s perspective in light of modern markets.

    in my opinion, at the end of the day we need a much revised system that can better manage fast moving global markets and the disputes that inevitably arise – such a system would necessarily need to rely on the marketplace to allocate resources while providing quick, economic & fair resolutions to all parties in the service of restoring predictability, confidence & integrity to markets…. & that is likely not possible with the systems we currently have – gene’s story seems to make that clear.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 12:17 pm

    Can anyone please say here, who is the person who advocated for implementing these PTAB administrative trial proceedings into the USPTO?
    Who is this wise guy or wise gal who is the Culprit?

    It seems this person thought that this EPO-style procedure will fit into the US patent system just fine, but we are now seeing terrible Unintended Consequences.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 10:53 am

    aldo March 29, 2016 9:46 am
    thanks gene for the insight.

    in my opinion issues of perception & confidence in the context of fast moving modern markets speaks to deep structural reforms that are needed in patent systems.

    @aldo 16
    No we don’t, Aldo. our patent system was just doing fine (pre-Kappos).
    Aldo you have never been a patent practitioner or an antitrust practitioner, have you? In an analogous way, our patent system is being attacked in the same manner as our economic system was being attacked when antitrust law was evolving during the 1960s and 1970s. Let us not let the Larry’s and Bob’s and David’s in the street wrongfully tell the American public that our patent system is flawed.

  • [Avatar for aldo]
    March 29, 2016 09:46 am

    thanks gene for the insight.

    in my opinion issues of perception & confidence in the context of fast moving modern markets speaks to deep structural reforms that are needed in patent systems.

    patent systems should inspire confidence in markets by enabling fairness & integrity to rein – current markets are ruled by those with the deepest pockets, not by those with the best ideas – this is dangerous for everybody.

    i respectfully submit that a conversation about completely re-structured patent systems that benefit from real marketplace input to allocate resources & resolve inevitable disputes quickly, economically, and with integrity / transparency, so as to restore market leadership to those with the best ideas… a true meritocracy…

    now that’s something to get excited about:)

  • [Avatar for Ternary]
    March 29, 2016 09:46 am

    Gene- you wrote
    “If you deserve a patent you get a patent, period.”

    I could not agree more. I would like to add: if you made an invention and you met the written description/enablement requirements that provided you a patent, you should get a chance to keep the patent. That should be the explicit warranty on the quality of the work of the USPTO.

    During any post-issuance procedure (be it in court or at the USPTO) wherein one or more claims are invalidated, the patent owner gets an opportunity to amend (or repair) the claims. During infringement litigation invalidation allegations are expected and claim construction is performed. At that stage we are already halfway to repair any claim.

    Claim repair is fair and equitable in light of the endless opportunities that exist to fight and invalidate presumably valid patents. As an inventor and patent owner and a client of the USPTO monopoly I expect and demand that warranty.

    Let’s also not forget that Congress is fully complicit in this mess. A patent law that has an exception for an industry, under the name of CBM??? Wow!

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 09:32 am

    Night Writer March 29, 2016 7:03 am
    @9 Stephan, Larry Page is spending massive amounts of money to cripple the patent system. It is to Google’s interest to end patents and they are trying their best.

    Hey Night Writer,
    from your postings you are a very knowledgeable and very informed patent practitioner.

    Here is a Golden Nugget for you.
    Allen Lo is quoted in various publications that Google has been filing about 5,000 (yes five thousand) patent applications per year during the last 3 years. So while Larry Page may have said his dislike for the patent system, he sure is protecting his google IP rights. Anyway, if you look at the USPTO database, you will see that Y2009 and prior years, Google only had about 185 (yes less than 200) issued patents or so. what happened? B-school Professors should do case studies on these. folks pursuing PhDs in economics, business administration, and IE or engineering science etc. should do some dissertations on these. It seems Larry Page was throwing bombs at the end zone but his receivers were bobbling his patent passes (or the Google shareholders eventually got “robbed” with that 16 Billion dollars spent to buy the Motorola wireless patents). even if Goldman Saks tries to paint them in a good light, there are some metrics that raises eyebrows from an academic perspective. anyway, there are tons of articles online about these.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 08:06 am

    To be fair, USPTO Director Emeritus J Rogan never wrote a patent application in his life and is not even a patent attorney, and so patent litigation experience and patent prosecution experience are not the only the qualifications for the job at the Office. But at least Judge Rogan never talked about a new class of owners called illegitimate patent owners and a new statutory exception called illegitimate patents.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 07:37 am

    @10 Night Writer
    of course, sir. you are correct.
    Let us pull the curtain (quoting Gene). Who was Larry Page’s former head of patents who said in 2007 that the patent system is in crisis just because this person could not defeat the trolls even though the alma mater firm of this person was defeating trolls just fine when this person was in private practice as a licensing attorney and so this person started saying in 2007 that we need to reform the US patent system even though this person is a licensing attorney with a very very very light experience as a patent prosecutor? now if you are making an indirect reference to Lo, that is a different topic all together and let us not lump Lo with the dealer activities and honesty-topic that Gene talked about.

    @11 Benny, I am not disagreeing with you. all i am saying is pre-Kappos and pre-AIA, start-ups had a more fair shot. patent reformers started inaccurate talks that patent reform is needed to give startups more of a fair shot but this patent reform has unintended consequences post-Kappos that are bad for startups and the patent reformers are from BIG silicon valley mountain view companies who are in conflict of interests with startups.

  • [Avatar for Benny]
    March 29, 2016 07:11 am

    you mention that we have a court appeal system
    At least in engineering, it is much cheaper and easier to solve problems at the source than downstream after they are created

  • [Avatar for Night Writer]
    Night Writer
    March 29, 2016 07:03 am

    @9 Stephan, Larry Page is spending massive amounts of money to cripple the patent system. It is to Google’s interest to end patents and they are trying their best.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 29, 2016 06:41 am

    if you don’t deserve a patent, you don’t get it. Neither case is universal.

    We do have an court appeal system in place.
    The problem is that a licensing attorney changed the game in a bad way pre-court proceedings so that the public and many non-patent persons are wrongfully thinking that the patent system is bad since a licensing attorney drove up the costs of procuring a patent, and Gene also properly pointed out the grave problems that are arising such as the looming budget problems and dealer problem etc. On the honesty issue, if you only knew some information, you would honestly be upset, and so would Mike Honda, Pritzker, and Prez. Larry Page better not be laughing now. You know that some licensing attorneys can patent bar members, but that does not necessarily mean that they can understand that reforming the patent system is like playing with a rubix cube (changing a part of it can have (and did have) Unintended Consequences).

  • [Avatar for Benny]
    March 29, 2016 05:39 am

    I’m not worried that the USPTO might not be honest. I believe they are. I’m worried that they might not be competent. Regarding your statement that “if you deserve a patent, you get a patent”, the converse should also hold true, i.e ,if you don’t deserve a patent, you don’t get it. Neither case is universal.

  • [Avatar for Reality]
    March 29, 2016 12:23 am

    As a former patent examiner and current patent attorney, I only wish that I had ten more thumbs so that I could give this post twelve thumbs up. Not only has the current law/policy neutered patent rights and enforeability, but also placed the USPTO on a future collision course with budget realities while simultaneously endangering inventors and examiners’ livelihoods.

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 28, 2016 09:28 pm

    Allen Lo would be a great USPTO Director who was a patent examiner and actually wrote patent applications on his own and prosecuted apps and litigated patents and so Lo is an actual practicing patent attorney and was from the patent group (I repeat, the patent group not the licensing group) of Finnegan Henderson Farabow. Allen seems to be Chinese American or Singaporean or whatevs, so I hope that does not disqualify Allen Lo as future USPTO Director. Kappos let those PTAB challenges to go through which in turn gave birth to the Reciprocal Trolls like Kyle Bass, so Kappos is also a terrible replacement. If I sound like an Electrical Engineer, I am not but I am a shameless gunning Bay Area “baby face assassin” Splash Brother who will beat MJ’s 72 wins.

  • [Avatar for angry dude]
    angry dude
    March 28, 2016 08:47 pm

    Stephan Curry@5

    “…seek the patent star so that the USPTO does not die”

    Anyone would be better than current PTO “leadership”
    At the very least they could keep Kappos – at least he is not Chinese and he understands perfectly well how patent system is supposed to work (him been a former IBM exec is a topic for another discussion)

  • [Avatar for Stephan Curry]
    Stephan Curry
    March 28, 2016 08:32 pm

    When google almost died, Grigol the well known patent star had to be asked to do some fixing/saving due to google’s incompetent patent strategizing. Let’s start a pool on if the USPTO will seek the patent star so that the USPTO does not die.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 28, 2016 04:46 pm


    It is my understanding that the way the fees were set was based on the amount of time that it would take the PTAB to do the various tasks. I don’t know that there has been a review about whether those fees are appropriate for the work being done. I don’t know or claim that the PTAB is a money making center for the USPTO, but the optics appear awful. Pretty much every event I attend I hear people talking about how the patent office charges fees to issue patents, they charge big fees to keep patents and they charge fees to kill patents. The reality of the situation almost becomes secondary at some point I’m afraid, but that is what you get when you have the Office embrace the “patent death squad” moniker.


  • [Avatar for Simon Elliott]
    Simon Elliott
    March 28, 2016 04:01 pm

    Do we have numbers on how much it actually costs the PTO for PTAB proceedings? If the PTO is making money, you have a further conflict of interest: a “bad” patent gets maintenance fees and PTAB fees when challenged.

  • [Avatar for Charles ANkner]
    Charles ANkner
    March 28, 2016 10:58 am

    Is it not the Federal Circuit which should have the only say in which patent is valid and which is not? And do not IP firms which purposefully draft and prosecute apps to ensure RCE or Appeal – contribute to the problem? But I do agree, it’s an interesting notion that the Office will admit it was wrong – for another fee. Live during IP wartime….

  • [Avatar for Night Writer]
    Night Writer
    March 28, 2016 10:19 am

    Lots of good points in there. I think the biggest one is the conflict the PTO has with maintenance fees. They can simply jack up the price and the money flows for raises. The AIA allows them to set the fee for general policy reasons, which pretty much short of one million dollar maintenance fees allows them to do whatever they want.

    I still think the best way to put some pressure on the PTO is with prior art. If your patent gets invalidated with prior art cited and used in an OA, you lose at the IPR. If new prior art is used, then you automatically get to go back to prosecution and get PTA. That would provide the incentive for the PTO to find the best art and the board to use the art cited. The attorneys then just need to make sure the claims are patentable over the art cited.

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